• Snap, Inc. v. SRK Technology LLCAll claims unpatentable
  PTAB · Oct 19, 2021 · IPR2020-00819 · APJ Kristen L Droesch · IPR · Final written decision

  The Board held claims 1, 2, 4–13, 15–19, 21–25, 30, 32–37, and 46–48 unpatentable under § 103 over the listed combinations of Newman, Araki, Trewin, and Ronkainen.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner contends that no explicit claim constructions are necessary for any claim term or phrase. See Pet. 8. Nonetheless, Petitioner advances claim constructions for “recording,” “adaptive recording application,” “configurable timing parameter,” “communication mode,” and “critical time” in the portions of the Petition addressing the challenges to patentability. See id. at 18–19, 27–28, 33, 36. Patent Owner does not appear to dispute Petitioner’s constructions for these terms. See generally PO Resp. In addition, we note that the ’059 Patent provides explicit definitions or descriptions for the following terms that appear in the claims: “media message,” “communication mode,” “interface element,” “duration of activation,” “configurable timing parameters,” “critical time,” “media signal,” “lower threshold time,” and “upper threshold time.” See, e.g., Ex. 1001, 2:59–4:14, 4:56–5:14, 6:28–60, 7:12–45, 8:10–21, 13:50–58. As demonstrated in the analysis below, we need not construe any claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill as of July 2012 would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in multimedia data communications and user interfaces. A person could also have qualified with more formal education and less technical experience, or vice versa. Pet. 5 (citing Ex. 1002 ¶¶ 15–21). Patent Owner does not dispute Petitioner’s assertions addressing the skill level of a person of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the evidence of the level of ordinary skill in the art provided by the prior art references. 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).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner further contends that it would have been obvious to one of ordinary skill in the art to modify the teachings of Newman in view of Araki such that Newman’s recording application is adaptable. See Pet. 25–26 (citing Ex. 1002 ¶¶ 115–116). Petitioner specifically argues that Newman’s recording application as modified by Araki to be adaptable, would “improve the flexibility and ease-of-use of the reply button [] and respond button [] in Newman” and provide the “benefit of a more accurate recording of the message regardless of which mode is selected.” Id. (citing Ex. 1002 ¶¶ 115–116). In particular, Petitioner contends that a skilled artisan would have appreciated that users might be confused as to how the buttons work, for example, how the start and ending of a recording is determined when the button is pressed. See id. at 25. In support of its arguments, Petitioner cites Araki’s disclosure addressing when a user does not understand the use of the speech recognition device and how to activate the microphone button. See id. (citing Ex. 1005 ¶ 25). Petitioner asserts that Araki teaches the system can select a recording mode that reflects the user’s intentions based on a duration of activation of the user interface element. See id. (citing 1005 ¶ 89; Ex. 1002 ¶ 116). According to Petitioner, [f]or example, regardless of the duration for which a user activated the ‘“reply’ button []” and ‘“respond’ button [],” the messaging program in Newman adapted based on Araki would have been able to more correctly record the voice message as the user intended, even for users with a limited understanding of how the button operated. Id. at 26 (citing Ex. 1002 ¶ 116). Based on the entire trial record, we determine that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify the teachings of Newman in view of Araki such that Newman’s recording application is adaptable. See Ex. 1002 ¶¶ 115–116; KSR, 550 U.S. at 418.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We agree with Petitioner that the aspect of Snapchat application that includes the feature of using a camera button to select one of a taking a photo or recording a video is not entitled to a presumption of a nexus. Specifically, we agree with Petitioner’s persuasive arguments that taking a photo is not a “communication mode” as defined as “a mode for initiating and terminating a recording.” To the extent that Patent Owner now argues that the Snapchat application includes a feature of using a camera button to select one of a video snap mode and a multi snap mode based on a comparison between one or more parameter values and one or more values corresponding to the duration of the activation of the camera button (see PO Sur-reply 20–21), this argument is belated and unsupported by the evidence of record. Instead, Patent Owner argued, and Dr. Cromarty testified with the following two examples: [(1)] the Snapchat application is programmed to select a “video snap” mode or “photo snap” mode based on whether the Snapchat application determines a “tap” or “press and hold” based on comparing or measuring the difference between the duration of the activation with the parameter[; and (2)] the Snapchat application is programmed to select one of a “multi snap” mode or “long snap” video or photo mode based on whether the Snapchat application determines a “press and hold” for more than 10 seconds or “tap or hold the camera button repeatedly” based on comparing or measuring the difference between the duration of the activation with the parameter. PO Resp. 51–52; Ex. 2016 ¶ 92. In other words, Patent Owner’s argument in its Response and Dr. Cromarty’s testimony does not assert that the Snapchat application is programmed to select between a video snap mode and a multi snap mode, as argued in the Sur-reply. See PO Resp. 51–52; Ex. 2016 ¶ 92; see also Ex. 1036, 25:8–27:1 (Dr. Cromarty’s Sur-reply deposition testimony regarding the multi snap feature). Patent Owner’s remaining evidence cited to support its belated argument also does not support its contentions. See Ex. 2016 ¶¶ 89–92; Ex. 2031 ¶¶ 23, 31–32. At best, Dr. Cromarty’s testimony at paragraphs 90–92 parenthetically quotes repeatedly, without sufficient explanation, the following two sentences from “Snapchat Support: Create a Snap” (Exs. 2020, 2021): “Press and hold the button to record a video Snap!” from the section entitled “Creating Photo and Video Snaps” and “Keep holding the [camera] button even after the time runs out – it’ll automatically start recording another Snap!” from the section entitled “Creating Multi Snaps.” Ex. 2016 ¶¶ 90–92; Exs. 2020, 2021. Accordingly, based on Patent Owner’s showing, we determine the Snapchat application is not coextensive with challenged claim 1, and, therefore, not entitled to a presumption of nexus. For these same reasons, Patent Owner’s assertion of actual nexus also fails because it is based on a conclusion that the evidence presented is reasonably commensurate with the scope of the claims. See PO Resp. 54 (citing Ex. 2016 ¶ 93). (b) Summary of Analysis of Objective Indicia of Nonobviousness In sum, we determine that Patent Owner has not shown entitlement to a presumption of nexus and has not shown an actual nexus between the objective indicia of nonobviousness and the claimed invention. Therefore, Patent Owner’s evidence of objective indicia of nonobviousness is entitled to minimal weight.” slip op. at 44

  Patent outcomesUS 8,996,059 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,996,059
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 31 and 33 are unpatentable under § 103; claim 34 is not shown unpatentable because the evidence and reasoning do not establish the associative cache limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 8–9 (citing Ex. 1056, 13–14; Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’789 patent and the asserted prior art. Inst. Dec. 26–27. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. We apply Petitioner’s definition of the level of ordinary skill in the art, as we did in the Institution Decision. Inst. Dec. 26–27. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’789 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “’099 patent as describing two seemingly disjointed packet exchanges involving two different clients or users (the first packet exchange between a client and the server and the second packet exchange between the client who has “inadvertently seen” the print service address and SAP #5) as belonging to the same “conversational flow.” And because Patent Owner’s proposed construction—that a “conversational flow” is client-specific—is inconsistent with the written description, we decline to limit a “conversational flow” to a specific client or user.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “been motivated, based on Ferdinand’s teachings, to “modify Riddle’s monitor with an input buffer memory to temporarily store received packets and improve performance by limiting packet drops,” and that including such input buffer memory in a packet acquisition device in accordance with Riddle’s and Ferdinand’s teachings “amounts to nothing more than combining known prior-art technologies used in their ordinary and predictable manner to queue packet traffic.” Pet. 38 (citing Ex. 1006 ¶ 276). Moreover, we agree with Petitioner that “Riddle and Ferdinand are in the same field of endeavor and contain overlapping disclosures with similar purposes,” and “illustrate that it was well-known and ubiquitous in the art for networking devices to include database storage structures” such as buffers. Id. at 28–29 (citing Ex. 1009, 19:8–12, 20:22–22:12, 26:2–7, 28:14–17, Figs. 5, 7A–7C; Ex. 1006 ¶ 258). Patent Owner does not substantively address Petitioner’s contentions or otherwise argue that Riddle, either alone or in combination with Ferdinand, fails to disclose or suggest the input buffer memory limitation recited in claim 19. Accordingly, for the reasons detailed above, we are persuaded that Petitioner has shown by a preponderance of the evidence that Riddle and/or the combination of Riddle and Ferdinand teaches or suggests this subject matter, and that an ordinarily skilled artisan would have been motivated to combine the teachings of the prior art as Petitioner proposes. We therefore adopt the contentions set forth in the Petition and in Dr. Weissman’s Declaration as mapped to this undisputed limitation of claim 19 as our own findings. NuVasive, 841 F.3d at 974.” slip op. at 37

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “not established by a preponderance of the evidence that claim 34 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to the “associative cache subsystem” limitation of claim 34 does not even cite Wakeman but instead cites only the testimony of Dr. Weissman and the specification of the ’789 patent. See Pet. 81.14 And neither Dr. Weissman’s 14 To be sure, the discussion of claim 34 in the Petition also includes an internal cross-reference to the “discuss[ion] for claim 33,” discussed at pages 79–80 of the Petition. Pet. 81. Although the discussion of that assertion that the artisan “would have understood that Wakeman’s CAM cache is fully associative due to Wakeman’s lack of a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” Id. We agree with Patent Owner that Dr. Weissman “does not explain why the absence of a cache placement policy in Wakeman would lead [an ordinarily skilled artisan] to just assume that Wakeman was teaching using of an associative cache placement policy.” PO Resp. 54. Thus, we determine that Dr. Weissman’s testimony in this regard is entitled to little, if any, weight. 37 CFR § 42.65(a). Moreover, as Patent Owner argues and we agree, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not demonstrate that an ordinarily skilled artisan would have been motivated to implement Wakeman’s cache as a fully associative cache. PO Resp. 54–55 (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418). We do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 34 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 60

  Patent outcomesUS 6,954,789 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,954,789
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 2, 7, 16, and 18 are unpatentable as obvious over Riddle, Ferdinand, and Wakeman; claim 3 was not shown unpatentable because the associative-cache obviousness showing lacked sufficient evidence and reasoning.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art and, thus, begin with the level of ordinary skill in the art. The level of ordinary skill in the art is “a prism or lens through which . . . the Board views the prior art and the claimed invention” to prevent hindsight bias. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In assessing the level of ordinary skill in the art, various factors may be considered, 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 re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). “[O]ne or more factors may predominate.” Id. Petitioner contends that an ordinarily skilled artisan would have “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 7–8 (citing, inter alia, Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’646 patent and the asserted prior art. Inst. Dec. 25– 26. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. art, as we did in the Institution Decision. Inst. Dec. 25–26. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’646 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 11

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

    “heart of the parties’ dispute (Ex. 1001, 2:37–45), we determine that the “for instance” phrase is exemplary and does not limit a “conversational flow” to a specific client or user. The phrase “for instance” is synonymous with “for example,” and necessarily indicates that “the running of an application on a server as requested by a client” exemplifies, but does not limit, the conversational flow to a server and a specific client or user. Our determination that the “for instance” phrase is exemplary and non-limiting is consistent with Patent Owner’s argument in its Preliminary Response that the “some” phrase (“some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and server”) is non-limiting. Specifically, Patent Owner argued that the use of the word “some” necessarily means that “some conversational flows involve multiple connections, while, some involve a single connection.” Prelim. Resp. 24. Similarly here, while “conversational flow” certainly may involve the running of an application on a server as requested by a single client or user, “conversational flow” is not limited to a single client or user.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner has shown by a preponderance of the evidence that the combination of Riddle and Ferdinand renders obvious the recited flow-entry database limitations in view of the proper construction of “conversational flow.” See supra § III.C. Petitioner’s assertions, which we adopt, are supported by the cited evidence and are persuasive. Moreover, we are persuaded that a person of ordinary skill in the art would have been motivated to combine the teachings of Riddle and Ferdinand as proposed by Petitioner and supported by the testimony of Dr. Weissman. See Pet. 25–27 (citing Ex. 1006 ¶¶ 256–257, 259).” slip op. at 44

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “not established by a preponderance of the evidence that claim 3 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to claim 3 does not even cite Wakeman, but instead cites only the testimony of Dr. Weissman and the specification of the ’646 patent. See Pet. 75–76.12 And neither Dr. Weissman’s testimony nor the ’646 patent provides any persuasive support for Petitioner’s assertion that “a [person of ordinary skill in the art] would have understood that Wakeman’s CAM cache is fully associative due to Wakeman not disclosing a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” We agree with Patent Owner that “Dr. Weissman does not explain why the absence of a discussion of a cache placement policy in Wakeman would lead a [person of ordinary skill in the art] to just assume that Wakeman was teaching using of an associative cache placement policy,” and that his testimony in this regard is entitled to little, if any, weight. PO Resp. 58; 37 CFR § 42.65(a). As Patent Owner contends, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not 12 To be sure, the discussion of claim 3 in the Petition also includes an internal cross-reference to the “discuss[ion] regarding element 1.3,” i.e., the “cache subsystem” limitation of claim 1, discussed at Pet. 57–59. Although the discussion of that limitation does include citations to Wakeman (see Pet. 58 (citing Ex. 1014, 1:20–28, 1:55–67, 2:31–49, 3:36–45, 4:31–40, 5:22–27, Figs. 2, 3)), however, notably absent from that discussion is any assertion that Wakeman specifically suggests an associative cache. motivated to implement Wakeman’s cache as a fully associative cache. Id. (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418), and we do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 3 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 59

  Patent outcomesUS 6,771,646 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,771,646
• Sling TV L.L.C. / Vudu, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Jan 19, 2021 · IPR2020-00677 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over McTernan and Robinson; the Board did not reach the Jacoby and Bland ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “similar field with at least two years of experience in web page and Internet technology or a person with a master’s degree in electrical engineering, computer science, or a similar field with a specialization in web page and Internet technology.” Pet. 7 (citing Ex. 1002 ¶ 49). Patent Owner “does not offer a competing definition” of a person of ordinary skill in the art. PO Resp. 12. Petitioner’s proposal (unopposed by Patent Owner) is supported by the testimony of Dr. Storer and is consistent with the ’609 patent specification and the asserted prior art. See Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000) (identifying factors); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “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.”). Accordingly, we adopt the level of ordinary skill as articulated by Petitioner, except that we remove the qualifier “at least” because it expands the range indefinitely without an upper bound. Accord Inst. Dec. 7 (adopting same position).9” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningNot reached

    “The parties’ post-institution briefs dispute whether Petitioner properly construed the term “computer system” (PO Resp. 14; Pet. Reply 3–5; PO Sur-Reply 1–3), but the parties agree that the Board need not construe this term in this proceeding (PO Resp. 13, 15; Pet. Reply 5; Tr. 16:25–17:18, 31:16–26). We agree that it is not necessary for us to construe this term: although the parties do not agree on the term’s meaning, resolution of their dispute would not affect this Decision.10 Accordingly, we do not expressly construe the term “computer system,” and we apply the plain and ordinary meaning of that term. See Tr. 17:19–23, 32:1–6 (no objection to using the term’s plain and ordinary meaning).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “The Supreme Court instructs: “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. But, the Supreme Court also cautioned that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. As a result, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id.” slip op. at 33

  Patent outcomesUS 8,407,609 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,407,609
• Sling TV L.L.C. / Vudu, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Jan 19, 2021 · IPR2019-01367 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–3 are unpatentable under §103 over McTernan and Robinson; the Board did not reach the Jacoby and Bland ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “similar field with at least two years of experience in web page and Internet technology or a person with a master’s degree in electrical engineering, computer science, or a similar field with a specialization in web page and Internet technology.” Pet. 7 (citing Ex. 1002 ¶ 49). Patent Owner “does not offer a competing definition” of a person of ordinary skill in the art. PO Resp. 12. Petitioner’s proposal (unopposed by Patent Owner) is supported by the testimony of Dr. Storer and is consistent with the ’609 patent specification and the asserted prior art. See Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000) (identifying factors); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “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.”). Accordingly, we adopt the level of ordinary skill as articulated by Petitioner, except that we remove the qualifier “at least” because it expands the range indefinitely without an upper bound. Accord Inst. Dec. 7 (adopting same position).9” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningNot reached

    “The parties’ post-institution briefs dispute whether Petitioner properly construed the term “computer system” (PO Resp. 14; Pet. Reply 3–5; PO Sur-Reply 1–3), but the parties agree that the Board need not construe this term in this proceeding (PO Resp. 13, 15; Pet. Reply 5; Tr. 16:25–17:18, 31:16–26). We agree that it is not necessary for us to construe this term: although the parties do not agree on the term’s meaning, resolution of their dispute would not affect this Decision.10 Accordingly, we do not expressly construe the term “computer system,” and we apply the plain and ordinary meaning of that term. See Tr. 17:19–23, 32:1–6 (no objection to using the term’s plain and ordinary meaning). In addition, Patent Owner submits two district court orders analyzing the construction of claim terms and phrases in the ’609 patent. PO Resp. 10 (citing Ex. 2001 (Order in Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055 (C.D. Cal.)); Ex. 2002 (Order in Uniloc 2017 LLC v. Google LLC, 2:18-cv- 10 For example, Patent Owner does not contend that the cited references fail to disclose a “computer system.” See generally PO Resp. Although Patent Owner argues that the Petition fails to show a second computer system distinct from the first computer system (id. at 31–33), resolution of that dispute is not affected by the meaning of the term “computer system,” as we explain in more detail in Section II.D.3.g, infra. 00502 (E.D. Tex.))); see Consolidated Trial Practice Guide 47 (Nov. 2019) (“Consolidated TPG”)11 (“Parties should submit a prior claim construction determination by a federal court or the ITC in an AIA proceeding as soon as that determination becomes available.”). We have reviewed and considered the district courts’ orders. See Ex. 2001, 6, 14–18, 26–27; Ex. 2002, 57–78; 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.”). However, given the issues presented in this proceeding, this Decision need not—and does not—expressly construe any claim terms or phrases. See PO Resp. 13 (stating that “the Board need not expressly construe any claim term”); Pet. Reply 23 (observing that Patent Owner “neither relies on nor asks the Board to adopt any of the constructions from the district court orders”); Tr. 17:24–18:15, 37:9–22; see also, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Having considered the parties’ arguments and the evidence presented, we find that Petitioner has shown by a preponderance of the evidence that McTernan’s show server 106 is “distinct from” the first computer system (i.e., security server 110, web server 104, and control server 112) and that show server 106 streams “directly to” client 108 “independent of” the first computer system, as required by the claim. McTernan teaches that show servers 106 are separate from (and different than) the servers in the first computer system, and McTernan’s show servers 106 perform different functions than web server 104, security servers 110, and central server 112. E.g., Ex. 1007, Fig. 1, 12:12–15, 14:6–15, 17:7–18:9; see Pet. 43 (“Figure 1 illustrates show servers 106 as separate servers with separate functionality.”); see also Ex. 1002 ¶ 183 (testifying that a person of ordinary skill in the art would understand McTernan’s show servers to be distinct from the first computer system). McTernan’s client 108 connects with a particular show server 106 independently of its communications with web server 104 and security servers 110 (e.g., Ex. 1007, 16:9–16, 17:2–16) and receives media resources from show server 106 via that connection (e.g., id. at 17:17–18:9, Fig. 1).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “of record, we are persuaded, by a preponderance of evidence, that it would have been obvious to combine McTernan and Robinson in the particular manner proposed by Petitioner. The Supreme Court instructs: “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. But, the Supreme Court also cautioned that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. As a result, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. We find that Petitioner’s proposal combines known elements with each performing the same function it had been known to perform (see Pet. 52, 54, 56, 71–73), and indeed, Patent Owner does not argue to the contrary. As explained above, McTernan discloses a system that uses heartbeat packets to determine the amount of time a presentation is streamed, and Robinson discloses a system that uses heartbeat packets to determine the total time a web page is displayed. Petitioner proposes a combination of Robinson’s heartbeats into McTernan’s system, with each performing its known function. We also find that the combination proposed by Petitioner is within the skill of an ordinary artisan and that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination. Petitioner’s assertions and explanations on this point are detailed and consistent with and supported by the evidence cited by Petitioner (see Pet. 52, 54, 56, 71–73), and Patent Owner does not dispute these assertions. Dr. Storer testifies that that a person of ordinary skill in the art “would have known to use identifiers to distinguish” the two types of heartbeat packets (in McTernan and Robinson) and would have known to store all heartbeats indexed by their respective identifiers. Ex. 1002 ¶¶ 204 (citing Ex. 1007, 18:15–17; Ex. 1008 ¶¶ 21–23), 211. Dr. Storer further testifies that, given the similarities between McTernan and Robinson, “the web server 104/ security server 110 of Mc[T]ernan would not need to be modified (or, at most, slightly modified to account for any minor differences in the syntax of the packets)” and that “[s]uch a modification would have been well within the capacity of a [person of ordinary skill in the art].” Ex. 1002 ¶ 238 (citing Ex. 1007, 18:15–17, 19:1–2; Ex. 1008 ¶ 22). Dr. Storer also testifies that modifying McTernan by adding Robinson’s tracking of the amount of time spent on a page “would be a trivial task and could involve merely hosting the applet of Robinson on the web servers of Mc[T]ernan and sending Robinson’s applet to the user along with the media player and plug-in of” slip op. at 33

  Patent outcomesUS 8,407,609 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,407,609
• Juniper Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Apr 7, 2020 · IPR2019-00026 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 15, and 41 were not shown unpatentable: Abadi did not identify suspicious code in its annotations, and the Abadi and Gryaznov combination did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; 2 Abadi et al., U.S. Patent No. 6,253,370 B1, issued June 26, 2001 (filed Dec. 1, 1997) (Ex. 1008, “Abadi”). 3 Dmitry O. Gryaznov, Scanners of the Year 2000: Heuristics, Virus Bull. Conf. 225 (Sept. 1995) (Ex. 1009, 2–11, “Gryaznov”). (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 7

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

    “Having considered the parties’ arguments, we see no reason to disturb their agreed construction of “Downloadable” as “an executable application program, which is downloaded from a source computer and run on the destination computer,” with which the parties state their express agreement. We clarify in Section II.D.2. below that we agree with Patent Owner that the executable application program that is to be run on the destination computer must be the same executable application program that is downloaded from the source computer within the agreed construction. Sur-reply 1–2. This interpretation is not a question of the construction of the term “Downloadable” itself, but rather flows from the express language of the challenged claims, in which “the Downloadable” that is “ma[de] . . . available to web clients” in the final step of each of independent claims 1 and 41 has its antecedent basis in the first claim step, “receiving . . . a Downloadable.” Likewise, the antecedent in claim 15 for “the Downloadable” that is made available to web clients is the Downloadable in which suspicious code is identified by the content inspection engine. We also agree with Patent Owner that the claimed “linking” of a DSP “to the Downloadable” does not compel a different understanding because we are not persuaded that the linking contemplated in the ’844 patent requires modification of the code of the Downloadable itself. Sur-reply 2–3.” slip op. at 12

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

    “Having considered the full record developed during trial, we agree with Patent Owner that the replacement of the word “profile” with “information” does not add any clarity to the meaning of this phrase and that the proper construction of “Downloadable security profile that identifies suspicious code in [the received / a] Downloadable” in the context of the ’844 patent is “profile that must at least include, but is not necessarily limited only to, an identification of hostile, potentially hostile, undesirable, or potentially undesirable code in the corresponding Downloadable.” PO Resp. 7–8. Regardless, we do not discern that the difference between the parties’ positions with respect to these phrases is dispositive of any issues in this proceeding.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “generate an ID for the Downloadable.” PO Resp. 21 (emphasis added) (quoting Ex. 2015, 15), 23 (emphasis added) (citing Ex. 2015, 20). Based on Patent Owner’s arguments, we are not persuaded that the ’639 provisional demonstrates possession by the inventors of linking a DSP to the Downloadable “before a web server makes the Downloadable available to web clients.” Rather, by the time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand that the Downloadable has already been received—and hence “made available”—by the web server. Notably, this conclusion does not depend on where the “linking” occurs—particularly, whether it may occur at a network gateway, a focus of the parties’ claim construction arguments (see, e.g., Pet. 25–27; PO Resp. 10–12; Section II.B.5, supra)—but instead on when it occurs relative to the Downloadable being made available to clients. Further, having considered the alleged Appendix to the ’639 provisional (Ex. 2015, 37–45), including portions cited by Dr. Butler in related litigation (see Ex. 2047), we are not persuaded that anything in the Appendix demonstrates possession of linking “before a web server makes the Downloadable available to web clients.” In conclusion, therefore, we are not persuaded that the inventors were in possession of the subject matter of the challenged claims at any time prior to the December 22, 1997, filing date of the ’648 application.” slip op. at 35

  Patent outcomesUS 6,154,844 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 6,154,844
• Samsung Electronics America, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01664 · APJ Garth D Baer · IPR · Final written decision

  The Board cancelled claim 22 and denied substitute claim 23 because Petitioner proved it obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park.

  RulingsFinal written decision

  • 112 supportDecided for patent owner

    “Petitioner contends in response only that “within an operational range” lacks written description support in the original specification. See Mot. Amend Opp. 1–5. We nonetheless agree with Patent Owner that the specification includes written description support for the amended claim language. As Patent Owner notes, the original application discloses “glitch correcting logic 235 further may be used to discard non-human motions” that are nevertheless accurately detectable by the sensor. EX1002, pp. 12-13, ¶ 21. This example is further explained in the context 9 The amended claim also makes several changes addressing clerical issues with original claim 22. See Mot. to Amend, Appendix A (changing “generation motion data” to “generate motion data,” changing “a dominant axis” to “the dominant axis,” and replacing a period in the middle of the claim with “; and.”). of “a device [that] is not being used but is in a moving vehicle.” Id. While the vehicle’s motion is measurable by the sensor, it is considered a glitch that “can be discarded as not fitting the signature of human motion.” Id. Mot. Amend 5; see also Ex. 1001, 3:23–27. In short, we agree with Patent Owner that non-human motions due to a vehicle’s motion would be within the device’s operational range. Petitioner is correct that the specification also includes examples of motion outside the device’s operational range. See, e.g., Ex. 1001, 5:19–23 (describing “a glitch correcting logic which removes abnormal data from the motion data”); id at 6:56–65 (explaining “an excessive number of glitches may indicate a problem with the accelerometer”); id. at 3:33–37 (noting “glitches generally are indicative that the accelerometer or sensor is malfunctioning”). Those examples, however, do not undermine the specification’s additional support for a glitch that is within the device’s operational range. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). 3. Responding to a Ground of Unpatentability” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “D. MOTION TO AMEND SUMMARY Because the Motion to Amend is non-contingent, we grant Patent Owner’s motion as to cancellation of issued claim 22. After reviewing the entire record, we determine Patent Owner has satisfied the predicate requirements for considering a motion to amend as to substitute claim 23. However, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park. We therefore deny Patent Owner’s Motion to Amend as to proposed substitute claim 23. Because Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park, we do not need to determine whether substitute claim 23 would have been obvious over Petitioner’s alternate asserted grounds involving McMahan in place of Hyatt and Marvit in place of Fabio. In summary: Motion to Amend Outcome Claim(s) Original Claims Canceled by the Amendment 22 Substitute Claims Proposed in the Amendment 23 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied 23 Substitute Claims: Not Reached IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion to Amend is denied as to proposed substitute claim 23; FURTHER ORDERED that claim 22 of the U.S. Patent No. 8,872,646 B2 is cancelled; and” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Reason to Combine Pasolini and Goldman Petitioner further asserts it would have been obvious to one skilled in the art to modify Pasolini’s device to include Goldman’s enhanced accelerometer techniques as a known method “to distinguish static acceleration (due to gravity) from dynamic acceleration (due to movement) when calculating acceleration.” Id. at 20–21 (citing Ex. 1010 ¶¶ 68–72). Petitioner explains, with relevant support from its expert, Dr. Essa, that “when analyzing acceleration signals, it is beneficial to factor in calibration, sampling rates, and tilt,” as Goldman teaches, “because the results are more accurate.” Id. at 21 (citing Ex. 1010 ¶ 71). Thus, Petitioner explains, combining Pasolini’s device with Goldman’s accelerometer techniques amounts to no more than “using the known techniques of Goldman to improve the similar device of Pasolini in the same way.” Id. at 22. Patent Owner does not challenge Petitioner’s assertions in this regard. We conclude Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination of Pasolini and Goldman would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “In sum, for the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Mizell, Park, and Fabio. D. MOTION TO AMEND SUMMARY Because the Motion to Amend is non-contingent, we grant Patent Owner’s motion as to cancellation of issued claim 22. After reviewing the entire record, we determine Patent Owner has satisfied the predicate requirements for considering a motion to amend as to substitute claim 23. However, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park. We therefore deny Patent Owner’s Motion to Amend as to proposed substitute claim 23. Because Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park, we do not need to determine whether substitute claim 23 would have been obvious over Petitioner’s alternate asserted grounds involving McMahan in place of Hyatt and Marvit in place of Fabio.” slip op. at 28

  Patent outcomesUS 8,872,646 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,872,646
• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · Oct 9, 2019 · IPR2019-00976 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7–10, 12, 15–18, 20, 23, and 24 were obvious over the asserted references.

  RulingsInstitution decision

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

    “the information presented in the petition . . . and any response . . . 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). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Id. ¶ 157. These maps/threads provide “[t]he capability to mine/gather the data associated with the digital content 320.” Id. ¶ 162 (emphasis added). Thus, Kobata’s super-distribution threads are stored as part of digital content 320 and provide a history of digital asset transfers—the “history of identities of computer devices that manipulated and/or forwarded the digital content 320.” Id. ¶ 152. However, the threads do not detect when such a transfer occurs. Nor do the cited paragraphs of the Golbeck Declaration relied upon by Petitioner explain how Kobata detects a transfer of the digital asset as required by claim 1. See Ex. 1003 ¶¶ 63–65 (discussing tracking, but not addressing detecting); see also Pet. 37 (citing same). Thus, Kobata does not support Petitioner’s assertion that Kobata’s super-distribution allows the “digital content [to] be tracked when transferred” as asserted by Petitioner. See Pet. 36.” slip op. at 18

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Kobata discloses an asset identification embedded within an “other portion” of the digital asset that does not include digital content, as required by claim 1. Petitioner asserts that ID portion 418 does not include digital content. Pet. 33–34 (citing Ex. 1003 ¶¶ 57, 60–65). The cited portions of the Golbeck Declaration, however, do not address the recited other portion. See Ex. 1003 ¶¶ 57, 60–65 (discussing the form of the digital content and tracking digital content, but not discussing the recited other portion). Paragraph 53 of the declaration does, noting that “the digital content package 320 can include a viewer module 416, the digital content data 410, the ID portion 418, the local digital rights database 412, [and] the personal rights manager module 414,” and summarily stating that “[t]hus, Kobata’s system includes . . . at least one other portion that does not include digital content.” Ex. 1003 ¶ 53 (citing Ex. 1005 ¶¶ 208–09). The cited portions of Kobata, however, do not address the components cited by Petitioner’s declarant. See Ex. 1005 ¶¶ 208–09 (discussing loading a file onto the recipient’s computer device, decrypting the file, and running the file, but not discussing the contents of ID portion 418). As Dr. Golbeck does not direct us to any other evidence to support her assertions, we accord her testimony little weight. See 37 C.F.R. § 42.65(a).” slip op. at 20

  • Skill levelSkill level board ownOther

    “Based on the Specification and the prior art of record, we find Petitioner’s definition reasonable and, for purposes of this Decision, adopt it as our own.” slip op. at 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,606,856
• Panasonic Avionics Corp. v. Linksmart Wireless Technology, LLCRehearing denied
  PTAB · Oct 8, 2019 · IPR2019-00043 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Panasonic’s rehearing request and left in place its denial of institution because the cited art did not teach the claimed redirection server.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “rehearing of our Decision Denying Institution of inter partes review of U.S. Patent RE46,459 (the ’459 patent) entered as Paper 7 (“Decision” or “Dec.”) on May 14, 2019. See Paper 8 (“Req. Reh’g.”). When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “redirecting a packet, i.e., one in which the NAS removes the request for the Subscriber’s packet and places it in a new packet to be sent to server 14. Req. Reh’g. 5–6 (citing Pet. 71, 78). Petitioner refers to this second technique as an address-replacement approach. Id. at 5. According to Petitioner, Malkin’s address replacement approach is consistent with our analysis that the ’459 patent requires modifying a request to access a destination on the network by changing the requested destination. Id. at 5–6 (citing Dec. 18). Petitioner overlooks that our analysis of Malkin is independent of how server 14 is accessed. Our Decision states, “When the NAS detects a user attempting unauthorized access, Malkin routes the user’s request to redirection server 14 within ISP 16.” Dec. 17 (emphasis added). We also stated that “Malkin either allows network access for authorized user requests or blocks network access for unauthorized user requests, but it does not redirect a request to another location on the network.” Id. (emphasis added). As our construction requires that the claimed redirection server perform some function other than allowing or blocking access to a network, i.e., redirecting the user to a network location that is different from the requested network location, we concluded that Malkin, which blocks access to the network, does not disclose the claimed redirection server. Id. at 17–18.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “redirection server” means “a server operable to control network access by applying the following actions: block, allow, direct.” Pet. 15. We explained that a prior panel of the Board construed “redirection server” as “requiring[ing] some sort of redirection functionality” and that “blocking and allowing are ‘further’ functions of the redirection server.” Dec. 10. We agreed that “‘redirection’ requires the server perform a redirection function as distinguished from merely blocking or allowing user access, i.e., there must be some form of redirection of the user’s request.” Id. at 11. We phrased the construction of “redirection server” to mean a server that “at least must be capable of redirecting a user to a network location that is different from the network location in the user’s request.” Dec. 12. Our slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “the user’s rule set correlated to a temporarily assigned network address. As an initial matter, we note that the Petition (i) cites Abraham as disclosing denying or allowing transmission of IP packets and (ii) argues it would have been obvious to augment the network server’s ability to deny or allow packets, as disclosed by Abraham, with Malkin’s packet redirection technique, thereby making Abraham’s network server a redirection server. Pet. 30–31. According to Petitioner, “it would have been obvious for Abraham’s network server to redirect packets that are blocked, as described by Malkin.” Id. at 32. As discussed above, because Malkin’s packet redirection technique is a blocking technique that fails to disclose Abraham does not alter our decision to deny institution. See also Dec. 18 (“As we are persuaded that Petitioner has not demonstrated the references disclose a redirection server as that term is properly construed within the meaning of the challenged claims, we conclude that Petitioner has not demonstrated a likelihood that it will prevail on its challenge to any of the claims.”).” slip op. at 6

  Claim construction§ 103 obviousness
• Apple Inc. / LG Electronics, Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Aug 9, 2019 · IPR2018-00361 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 6-9, 12, 14, and 15 unpatentable over Riggins and Devarakonda and claim 20 not shown unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Patent Owner to show we misapprehended or overlooked the matter it requests that we review. We are not persuaded that Patent Owner has shown that we misapprehended or overlooked the matter raised in the Request for Rehearing.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  § 103 obviousness
  Patents in suitUS 6,216,158

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.