• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00919 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan did not teach invocation of the second function only if safe, and the asserted three-reference combination lacked a sufficient motivation to combine.

  RulingsFinal written decision

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

    “reference to a “data container” (id. at 13:5152) and “network content” (id. at 4:3737), the concern over scripts embedded in web pages or “other web content” (id. at 1:3739), we conclude that the Specification of the ’154 patent uses the claimed “content” to refer broadly to the data or information, modified for processing, that the client receives from the network, where, in the case of the Internet, it may refer to a web page and its elements. This interpretation is consistent also with the meaning of the term in the art, as evidenced by dictionaries concerning computing and engineering. See content, Microsoft Computer Dictionary, 125 (5th ed. 2002) (Ex. 3002) (defining “content” as (1) “the data that appears between the starting and ending tags of an element in an SGML, XML, or HTML document. The content of an element may consist of plain text or other elements,” (2) “The message body of a newsgroup article or e-mail message;” and (3) “The ‘meat’ of a document, as opposed to its format or appearance.”); see also content, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY, 142 (2004) (Ex. 3001) (“Information, especially that which is available online, which may be any combination of text, audio, video, files, or the like.”). Accordingly, under the broadest reasonable interpretation in the context of the Specification and the surrounding claim language, we conclude that “content” is data or information, which has been modified and is received over a network.” slip op. at 13

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

    “first function.” The Specification, however, does use the phrase “function call” to state that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3743 (emphasis added). The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. Therefore, we understand the Specification to use the phrase “function call” in the same sense as the phrase “call to a [] function.” That is, a program instruction specifies the function name and its parameters, where execution of the instruction results in the function providing a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Id. (displaying a stamp labeled “Engineering Periodicals, University of Washington, Jan 31, 2000”). Additionally, the cover page includes a label stating “Engineering Library Display Periodical Noncirculating until: Mar 08 2000.” Id. The stamps and labels are described by Mr. Melvin (“Mel”) DeSart, Head of the University of Washington Engineering Library, as evidence that the Library’s process was to stamp a received periodical and to affix a label when the periodical was chosen for display at the Engineering Library Display Periodicals area. Ex. 1036 ¶ 2. According to DeSart, the stamp and label convey that the article was received (and, therefore, stamped) at the University of Washington Libraries, on January 31, 2000, and was redirected to the Engineering Library, where it was added to the display and made “publicly available” from February 8, 2000 until March 8, 2000. Id. ¶ 3. We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8.” slip op. at 25

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. 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 17

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-01071 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable over Ross because Ross does not teach or suggest content including a call to a first function.

  RulingsFinal written decision

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

    “D. OBVIOUSNESS GROUND BASED ON ROSS The Petition relies on Ross as teaching or suggesting all the limitations of claims 18, 10, and 11. Pet. 1437. Having reviewed the arguments and evidence provided by Petitioner and the arguments and evidence presented by Patent Owner, we determine that Petitioner has failed to show by a preponderance of the evidence that Ross teaches or suggests all the limitations of the challenged claims, and more particularly, “the content including a call to a first function.”” slip op. at 11

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

    “first function.” But the Specification uses the phrase “function call” in stating that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3842. The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. From such examples, we understand the Specification to use the phrase “function call” in the same sense that the claims recite in the phrase “call to a [] function.” That is, a “call” is part of the recited “content,” as a statement or instruction containing the function that, when executed, causes the function to provide a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 7

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

    “3. Conclusion Having considered the arguments and evidence presented by both parties, we determine that Petitioner has not shown by a preponderance of the evidence that the challenged claims would have been obvious over Ross. Because we find that Ross does not teach or suggest “content including a call to a first function,” we need not consider whether Patent Owner succeeded in its attempt to prove the prior invention of the ’154 patent or whether a conclusion of nonobviousness is warranted because of evidence of secondary considerations of nonobviousness.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “[w]hile replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. The Board will not attempt to sort proper from improper portions of the reply. Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing. Trial Practice Guide, 77 Fed. Reg. at 48767; see also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir., 2015) (discussing that a patent owner “is undoubtedly entitled to notice of and fair opportunity to meet the grounds of rejection.”). With these guidelines in mind, we are persuaded that the above-identified argument in the Reply should not be considered in deciding this matter. As stated above, the Petition relies on Ross’s “hook functions within a hook script” as teaching or suggesting the “call to a first function.” Pet. 1718. Although the Petition relies on the understanding of a person of ordinary skill in the art when explaining Ross’s handling of the hook function, Petitioner does not assert in any meaningful way that Ross’s use of hook functions in the hook script would be modified to include calls to additional hook functions that Ross does not describe. Nor does Petitioner explain in the Petition that Ross would be modified to replace the assignment instruction with a call to the hook function. The arguments in the Reply are not explanations of how Ross’s hook functions, as taught by Ross, may be understood to include the recited “call to a first function,” as asserted in the Petition. Rather, the argument that a “call” may be added to either the security check or the hook script is an alteration of Ross, necessitated because Patent Owner correctly argues that Ross fails to teach or suggest the limitation. The contention that Ross’s embodiments would be modified, altered, or imbued with details not present in Ross is a new contention, necessary to make a case for the unpatentability of the claims, and should have been presented in the Petition. To consider the argument would unfairly prejudice Patent Owner who, after having argued there is a significant gap in Petitioner’s case, would be left without an opportunity to respond substantively to the new arguments and support its rebuttal with additional evidence, if necessary. Accordingly, we do not consider the improper arguments identified above.” slip op. at 20

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable over Ross because Ross does not teach or suggest content including a call to a first function.

  RulingsFinal written decision

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

    “first function.” But the Specification uses the phrase “function call” in stating that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3842. The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. From such examples, we understand the Specification to use the phrase “function call” in the same sense that the claims recite in the phrase “call to a [] function.” That is, a “call” is part of the recited “content,” as a statement or instruction containing the function that, when executed, causes the function to provide a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 7

  • Skill levelSkill level board ownOther

    “of ordinary skill that is different from Petitioner’s. Ex. 2035 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year’s experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 39. Accordingly, we determine that in this case no express articulation of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. 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 10

  • Expert testimonyPatent owner expert creditedOther

    “Ross describes the combined hook script and the original script as using an “assignment,” not a “call” for invoking the first function. PO Resp. 2324 (citing Ex. 2035 ¶61). We credit this testimony. Ross illustrates in Figure 4, reproduced below, a combined script, which shows more detail regarding how Ross formulates the hook script and the included hook function. See Ex. 1003, Fig. 4. Figure 4 illustrates combined script 402 including hook script 404 and original script 302. Id. Dr. Medvidovic identifies the hook function in hook script 404 as “function HookedActiveXObject(objname).” Ex. 2035 ¶ 61. The combined script does not include a call to the function “HookedActiveXObject.” Instead, as Dr. Medvidovic explains, Ross’s hook script includes a call to the original function, not the hook function, as shown below in Patent Owner’s annotated Figure 4. The annotated Figure 4 of Ross, above, annotates Ross’s script by pointing out: (1) in brackets, that a group of instructions comprise the function “Hooked ActiveXObject(objname);” and (2) that the body of the function is the “Hook Function.” See PO Resp. 23. The annotations also show that the instruction “Req=new ActiveXObject(“Microsoft.XMLHTTP”)” is the “Call to Original Function.” Id. Dr. Medvidovic explains that the call to “new ActiveXObject(“Microsoft.XMLHTTP”) indirectly invokes “function HookedActiveXObject,” using Ross’s assignment technique. See Ex. 2035 ¶ 61. Ross’s description of the hook functions confirms this technique. For example, Ross states that “[t]he hook function corresponding to the data content original function is executed when the original function is called.” Ex. 1003, Abstract; see also ¶ 13 (“executing a hook function when a corresponding original function is called in the data content”). Ross further states that the “hook function is configured to supersede a corresponding original function.” Id. ¶¶ 1012.” slip op. at 14

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

    “the first function, the issue is not simply whether Ross executes or processes the first function first, before the second function. The issue is whether the content in Ross includes a “call to a first function,” as claimed. We find that Ross does not. Patent Owner’s explanation of Ross is consistent with Ross’s description of how the hook script is generated and processed. Ross’s hook script generator creates new functions to replace the original functions, such as the JavaScript function embedded in a web page. Id. ¶ 26. When the web page is received, the script filter injects “the JavaScript that hooks the critical functions and methods before any other HTML in a loading page.” Id. ¶ 29. To implement these “hooks,” Ross states that it replaces the original function with a new replacement function or that it substitutes an original function with a filtered function by instantiating a “hooked” process. Id. ¶¶ 33, 34. These statements of “replacement” and “substitution,” however, refer to how the hook functions are implemented when the script executes. Neither of these statements explains whether a “call” to a hook function is included in the script. That is, the replacement or substitution may result in invoking the hook function, without the content actually including a call. And this indirect invocation—not using a call—of the hooked function is what Ross tends to show. For instance, Ross describes the method of processing the content as follows: (1) generating a hook script with a hook function; (2) loading the hook script; (3) loading the data content having the original function; and (4) executing a hook function when a corresponding original function is called in the data content. Id. ¶ 38. Thus, the hook function is loaded before anything else is loaded in order to define the hook function and to effectuate the replacement. The replacement, or the method of superseding, is accomplished by the assignment that results from the use of the instruction ActiveXObject=HookedActiveXObject. As Dr. Medvidovic explains, by way of assignment of ActiveXObject (original function) to HookedActiveXObject (substitute or first function), a call to the original function indirectly invokes the substitute or first function. See Ex. 1011, 10:2013:21. This understanding is further confirmed by Ross’s description of the hook functions, as stated above, and when it refers to them as “new objects that will be used as replacements when the appropriate constructor is invoked.” Ex. 1003 ¶ 35 (emphasis added). In sum, Ross’s content does not include a “call to a first function” because the hook function is not directly called. There is no instruction or statement in the hook script that requests the service of the hook function. See also Ex. 2043 at 88:1116 (Dr. Rubin, Petitioner’s expert, testifying that “in the pseudocode in figure 4 [of Ross] there’s no explicit call to a hooked function.”). The hook function is invoked only when the call to the original function in the data content, which has been assigned via the hook script to a hook function, is executed. See id. (“These hooks are installed before any other script on the web page loads, ensuring that any script provided as a part of the data content 602, such as a web page, will call the new hooked functions.”).” slip op. at 17

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2015-01979 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan does not teach conditional invocation of the second function, and the proposed three-reference combination lacks adequate motivation.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Patent Owner’s expert Dr. Medvidovic disagrees with Dr. Rubin’s opinion that instrumentation can occur in many hosts. Ex. 2002 ¶ 71. His testimony is unconvincing, however. Dr. Medvidovic does not address Dr. Rubin’s assessment that Khazan teaches instrumentation on a host that is different from the host that executes the wrapped function. Instead, Dr. Medvidovic asserts that Khazan does not disclose applications received through a network. Id. Further, Dr. Medvidovic opines that Khazan addresses viruses that infect applications resident within a computer’s file rather than in content received over a network. Id. We find that Dr. Medvidovic’s statements do not address Petitioner’s contention and ignore relevant teachings of Khazan. For instance, Khazan teaches that each host accesses information stored in data storage devices using a network (communication medium). Ex. 1003 ¶ 33. And any of Khazan’s components—e.g., static analyzer, dynamic analyzer, libraries, application executable, etc.—may be stored in the data storage system. See id. ¶ 72 (describing Figure 4A, which also lists the various lists 106, 111, 112). Therefore, we do not agree with Patent Owner’s narrow assessment of Khazan, which would limit application of Khazan’s techniques exclusively to a file resident in the host, rather than on content received over a network. Indeed, Khazan expressly discloses an embodiment in which instrumentation is performed “before invocation of the application” allowing for the instrumented library (or application) to be stored on a storage device. Ex. 1003 ¶ 75. That storage device, as discussed above, is accessed via a network. Accordingly, it is reasonable to conclude, and we find that, Khazan teaches or suggests that any host may receive over the network (communication medium 18) instrumented applications or libraries for processing at the host.” slip op. at 36

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. 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 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8. We also find that skilled artisans exercising reasonable diligence would have been able to locate Sirer. In addition to the accessibility of the article on the library display area and on shelves, DeSart testified that the periodical containing the Sirer, “Operating Systems Review,” was catalogued in the library’s electronic catalog. Ex. 2006, 10:1311:23. The periodical could be searched by the title of the periodical and its keywords. Id.; 30:1431:9.” slip op. at 25

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

    “We find that Petitioner has not explained sufficiently how the reference’s teachings would be combined in order to achieve the claimed limitations. For instance, Petitioner’s assertion that the combination is predictable because the references continue to do what they did prior to the combination (Ex. 1002 ¶ 125) is conclusory and unreasonable in light of the various and necessary, yet unexplained modifications of Khazan’s teachings for combinability with those of Sirer and Ben-Natan.” slip op. at 60

  Patent outcomesUS 8,141,154 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentable
  PTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were not shown unpatentable under §103 over Oe and Etsuo because the proposed combinations lacked sufficient reasoned support.

  RulingsFinal written decision

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

    “persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We have reviewed the testimony from both Dr. Escuti, and Patent Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.5 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 5 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “disclosure in the specification of the ’600 patent to support Patent Owner’s proposed claim construction of “height” and “width.” Indeed, our review of the specification of the ’660 patent reveals that these terms are not defined explicitly or implicitly. For example, the specification states that “the deformities may vary in shape and/or size along the length and/or width of the panel members.” Ex. 1001, 5:43–44 (emphasis added). With respect to the planar optical conductor, claims 1 and 33 each recite, in relevant part, that the input edge has “at least one input edge with a greater cross-sectional width than thickness.” Ex. 1001, 9:11–12, 10:65–67 (emphasis added). Both claims 1 and 33 recite that the output distribution generated by the plurality of light sources is “defined by a greater width component than height component.”4 Id. at 9:15–16, 11:5–6 (emphasis added). Claim 33 recites that the plurality of LED light sources each have “a greater width than height.” Id. at 11:1–2 (emphasis added). Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam-” slip op. at 10

  Patent outcomesUS 7,404,660 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,404,660
• LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentable
  PTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were held not unpatentable under § 103 over Oe and Etsuo because the combination lacked an adequately supported reason to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam- 3 In a related district court proceeding, the claim term “output distribution defined by a greater width component than height component” was determined to have its plain meaning. Ex. 2008, 47. See TR. 21:24–22:8. Webster.com, http://www.merriam-webster.com/dictionary/height, (last viewed July 10, 2015). Within the context of the claims, we are not persuaded by Patent Owner’s contentions that the term “width” is used other than according to its ordinary and customary meaning with respect to the shape of the input edge of the optical conductor, the output distribution of the light source, and the shape of the LED light source. Along this vein, we are not persuaded by Patent Owner’s contentions that the term “height” is used other than according to its ordinary and customary meaning with respect to the light output distribution. Based on this usage in the claims, no express construction is necessary.” slip op. at 10

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

    “persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component. We also consider Petitioner’s argument in the Reply that, in addition to Etsuo, Petitioner also relies on Oe’s explicit disclosure of “a plurality of point-like sources of light.” Reply 16–17. Petitioner directs us to the passage of Oe cited in its claim chart (Pet. 40), describing how the light source could be “a plurality of point-like sources of light arranged along the incident surface” (Ex. 1024, 7:30–31). Id. at 16. But Petitioner’s arguments in this regard do not address specifically its proffered reason to combine Oe and Etsuo. Indeed, Petitioner does not explain the relevance of the point-like sources of light to the claim element in question. See 37 C.F.R. § 42.22(a)(2) (requiring a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent). Patent Owner contends that “Petitioner never argues that ‘point-like sources’ are equivalent to LEDs.” PO Resp. 10. We agree. Petitioner’s argument that “Oe discloses a plurality of light sources 4 adjacent to the input edges” (Pet. 35 (citing Ex. 1024, 6:5–13; Ex. 1004 ¶ 161)) makes no mention of the specific passage in Oe concerning the point-like sources of light. Indeed, the cited passage states that:” slip op. at 20

  Patent outcomesUS 7,404,660 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,404,660
• Hulu, LLC / Netflix, Inc. et al. v. CRFD Research, Inc.No claims unpatentable
  PTAB · Jun 1, 2016 · IPR2015-00259 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and 38–41 were not shown unpatentable because the prior art did not teach transmitting session history after discontinuing the session.

  RulingsFinal written decision

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

    “Claim Term Interpretation “modality” a preferred mode of interaction “device profile” information pertaining to the operation of a device, such as the data format or modality of the device “in response to . . . in response to the second device being made activation of said active, such as by a user logging on to the second device” second device “session” a series of information transactions between communicating devices during a particular time period “discontinuing” terminating or otherwise stopping, with the ability to be resumed “discontinued” terminated or otherwise stopped, with the ability to be resumed “session transfer computer hardware and/or software that module” participates in the transfer of a session See Dec. on Inst. 6–9; DISH Network Corp. v. CRFD Research, Inc., Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9); Unified Patents Inc. v. CRFD Research, Inc., Case IPR2015-00157, slip op. at 6–9 (PTAB Apr. 30, 2015) (Paper 8); Iron Dome LLC v. CRFD Research, Inc., Case IPR2015-00055, slip op. at 6–10 (PTAB Apr. 27, 2015) (Paper 10). The parties do not dispute these interpretations in their Patent Owner Response and Reply. We do not perceive any reason or evidence that compels any deviation from these interpretations. Accordingly, we adopt our previous analysis for purposes of this Decision.” slip op. at 7

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

    “Having reviewed all of the parties’ arguments and supporting evidence, we conclude that Petitioner has not shown, by a preponderance of the evidence, that Bates expressly or inherently discloses transmitting the session history “after said session is discontinued on said first device.” See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). We begin by noting that there is nothing in Bates explicitly disclosing when the alleged “session” ends. Petitioner acknowledged this at the hearing. Tr. 42:5–8. Bates, however, does disclose what occurs during a “session.” The term “session” in the claims means a series of information transactions between communicating devices during a particular time period. See supra Section II.A. Bates uses the slightly different term “browsing session,” which it defines as the “period of time when the browser 240 is executing on a client computer 106 and a network connection exists between the client 106 and the network 104 allowing a user to traverse network addresses corresponding to the servers 108.” Ex. 1004, col. 4, ll. 61–67. Thus, the “browsing session” in Bates is the period of time when the browser program is “executing” on the client computer and the client computer has an open connection to the network servers with which it is communicating. During this time, the client computer in Bates generates browser information in response to user input (e.g., by creating a history of websites visited by the user). See id. at Abstract (“A first browser executing on a first computer generates browser information in response to user input.”), col. 9, ll. 17–46 (describing the generation and storage of browser information in buffer 242), col. 2, ll. 2–10 (reciting “generating the user-configured browser information during execution of a first network browser on a first computer in response to user-input commands”), claim 1 (same). Accordingly, the alleged “session” in Bates (i.e., the series of information transactions between communicating devices) occurs during the time period of what Bates refers to as the “browsing session.”” slip op. at 13

  • Strike new argumentNew argument disregardedOther

    “that are procedurally improper and not entitled to consideration. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., – F.3d –, 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at 44 (PTAB May 6, 2016) (Paper 50) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”). First, Petitioner provides a lengthy explanation as to how a person of ordinary skill in the art would have understood Bates to operate based on the alleged timing of Microsoft Windows shutdown signals and the interaction between a browser application and email software. Reply 6–9. Petitioner’s explanation amounts to a new theory for why Bates allegedly discloses transmitting the session history “after said session is discontinued on said first device” that was not discussed in the Petition. See Pet. 20–24 (citing only Bates’s disclosure of the events “upon user request,” “at shutdown,” and “at idle period”); Tr. 9:1–4 (acknowledging that shutdown signals are not discussed in the Petition). Indeed, Petitioner does not cite in its Reply any testimony from Dr. Claypool’s declaration or other evidence submitted with the Petition, but rather relies solely on the cross-examination testimony of Patent Owner’s declarant, Dr. Mohapatra. See Pet. 20–24 (citing Ex. 1003); Reply 6–9 (citing Ex. 1018); Tr. 13:18–21.” slip op. at 18

  • Skill levelSkill level board ownDecided for patent owner

    “KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field as well as at least two years of academic or industry experience in the software field,” citing the testimony of Dr. Claypool. Pet. 8 (citing Ex. 1003 ¶¶ 55–58). Dr. Mohapatra similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science or computer engineering with approximately 2 years of practical work experience or post-graduate research in a field such as computer networking and/or distributed systems.” Ex. 2001 ¶ 11. Based on our review of the ’233 patent, the types of problems and solutions described in the ’233 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in computer science or computer engineering (or its equivalent), and at least two years of experience with computer networking, distributed systems, or similar fields. See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he invention generally relates to session management in a distributed computer network,” and describing issues in the prior art when a user has “several communication-enabled devices” and wants to switch between them). We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 21

  Patent outcomesUS 7,191,233 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,191,233
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision

  Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).

  RulingsFinal written decision

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

    “In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22

  Patent outcomesUS 6,754,195 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 6,754,195
• Canon Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Oct 2, 2015 · IPR2014-00757 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted references did not disclose received scan control signals that contain no timing control signals.

  RulingsFinal written decision

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

    “considerations are relevant. First, the Specification of the ’285 patent explains that the “flat cable transmits scanning control signals . . . instead of timing control signals.” Ex. 1001, col. 4, ll. 26–28 (emphasis added). In the related proceeding, we observed that this portion of the Specification “suggests a distinction between scanning control signals and timing control signals,” but “does not support unambiguously Patent Owner’s position of complete independence between scan control signals and timing control signals.” Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00535, slip op. at 8 (PTAB Sept. 23, 2015) (Paper 37). We note that a construction of “scan control signals” and “timing control signals” that effected such complete independence would render the negative limitation that “the received scan control signals do not comprise any timing control signals” superfluous in the claims of the ’285 patent. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (citing Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)); see Gen. Am. Transp. Corp. v. Cryo- Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting district-court claim construction that rendered claim requirement superfluous). Second, we disagree with Petitioner’s contention that Patent Owner’s” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “3. Means-Plus-Function Limitations Claims 1–6 include several terms recited as “means for” performing identified functions. In the Institution Decision, we construed these recitations under 35 U.S.C. § 112, ¶ 6, as follows. Dec. 7–8. We see no reason to alter those constructions based on the positions of the parties as developed during the trial, and accordingly adopt them herein.” slip op. at 9

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

    “generation of timing control signals in response to receipt of scan control signals, “wherein the [received] scan control signals do not comprise any timing control signals.” Petitioner contends that all limitations of the independent claims, including this recitation, are disclosed by Hayashi. Pet. 17–25. Specifically, Petitioner contends that the set of signals WR*, A<0>, and CDATA<7, . . . ,0> are “scan control signals” and that the signals output by driving clock generating circuit 112 are “timing control signals.” Id. at 17–19. Petitioner identifies a distinction in the functionality of signals WR*, A<0>, and CDATA<7, . . . ,0>, and the functionality of signals output by driving clock generating circuit 112. Because the signals output by the driving clock generating circuit are produced in response to a data value carried by CDATA<7, . . . ,0>, Petitioner contends that CDATA<7, . . . , 0> is not itself a timing control signal. Id. at 19. According to Petitioner, only signals output by Hayashi’s driving clock generating circuit are timing control signals, not signals traveling to the driving clock generating circuit. Id. Petitioner supports its argument with testimony by Richard Carley, Ph.D. Ex. 1002 ¶¶ 52–60, 121–128, 196–203.” slip op. at 12

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

    “Petitioner thus contends that all limitations of the independent claims, including the requirement that “the [received] scan control signals do not comprise any timing control signals,” are disclosed by Tsuboi and Wada. Pet. 41–54. Patent Owner responds that “[p]eople of ordinary skill in the art would readily recognize Tsuboi’s primary scanning synchronization signal and Wada’s synchronization signal TR are timing control signals.” PO Resp. 25. Similar to its argument directed at the Hayashi-based grounds, Patent Owner relies on testimony by Dr. Zech that a “CPU is understood by one of ordinary skill in the art to control a timing generator.” Id. at 25–26 (citing Ex. 2004 ¶ 69). Patent Owner observes that “Tsuboi’s primary scanning synchronization signal is generated . . . by CPU 21” and that “Wada’s synchronization signal TR is also generated by a timing generator, namely control signal generating circuit 27.” Id. (citing Ex. 1005 ¶ 39; Ex. 1006 ¶ 18). Patent Owner further notes that Petitioner’s expert, Dr. Carley, acknowledged during his deposition that the primary scanning synchronization signal “is used to align the reading out of the CCD in time, meaning it starts it up.” Id. at 26 (citing Ex. 2006, 72:14–16). Under the claim construction we have adopted, we are persuaded by Patent Owner’s analysis. Based on the evidence before us, we find that Petitioner has not demonstrated that Tsuboi or Wada discloses “wherein the received scan control signals do not comprise any timing control signals,” as recited in each independent claim. Patent Owner’s analysis thus applies to all claims of the ’285 patent. Accordingly, we conclude that Petitioner has not established, by a preponderance of the evidence, that any claim of the ’285 patent is unpatentable over Tsuboi and Wada together or in combination with other art.” slip op. at 17

  Patent outcomesUS 8,300,285 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,300,285
• Dynamic Drinkware LLC v. National Graphics, Inc.No claims unpatentable
  PTAB · Sep 12, 2014 · IPR2013-00131 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1 and 12 were not shown unpatentable because Patent Owner proved reduction to practice before Raymond’s effective prior art date.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner

    “preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6

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

    “We conclude, therefore, that Patent Owner has shown by a preponderance of the evidence that by March 28, 2000, a sample product was produced for Patent Owner demonstrating that the Rexam process was suitable for its intended purpose. The testimony establishes that the Rexam process was successful in injection molding a plastic product with a lenticular image that would be acceptable to the intended end user. Walker Decl. ¶ 11; Krause Decl. ¶ 7.” slip op. at 18

  Patent outcomesUS 6,635,196 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 6,635,196

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.