• International Business Machines Corporation v. Digital Doors, Inc.Institution denied
  PTAB · Dec 1, 2023 · IPR2023-00968 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution on claims 1, 2, 10, 15, 16, 19, 33, 34, 42, 47, 48, and 51, citing Fintiv and finding no compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “We agree with Patent Owner’s analysis based on the most recent time- to-trial statistics and the schedule set by Judge Gilstrap. We are not persuaded by Petitioner’s argument based on out-of-date data. We find that this factor favors exercising our discretion to deny institution.” slip op. at 10

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

    “which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 13

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

    “in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. For the reasons given, Petitioner’s arguments and evidence do not present a “compelling, meritorious challenge.” In view of this determination, we do not need to address Patent ’047 patent or that there is insufficient motivation to combine Bossemeyer and Merenda.” slip op. at 27

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,322,047
• Nearmap US, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00735 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–16 were not shown unpatentable because the Snavely-based combinations did not teach a “primary oblique image” as construed.

  RulingsFinal written decision

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

    “Patent Owner’s construction of the term “primary oblique image” as “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” This construction is supported by the ’518 patent Specification, which includes a listing of “Terminology” that contains the following definition for the term “primary oblique image”: Primary oblique image—a displayed oblique image that can be considered ‘in front of’ the other displayed images. The primary oblique image can also be a master image. Ex. 1001, 6:25:31–34.” slip op. at 18

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

    “Based on the full trial record, we find that Petitioner has not sufficiently shown that the proposed combination includes a “primary oblique image” as properly construed. As discussed above, we construe the term “primary oblique image” to require “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” See supra § II.A.1(b). In its papers, Petitioner does not demonstrate that Snavely discloses a “primary oblique image” that can be considered “in front of” the other displayed images. To the contrary, we agree with and find credible Dr. Bajaj’s testimony that the “main view” of Snavely’s Figure 5, which Petitioner points to as the “primary oblique image,” is “behind the other displayed images in overlay panes,” such as the information pane, thumbnail pane, and map pane, and “therefore, necessarily cannot be considered ‘in front of’ the other displayed images.” Ex. 2007 ¶ 60; see Ex. 1004, Fig. 5; PO Resp. 26. Our conclusion is also supported by the fact that Snavely refers to the information, map, and thumbnail panes as “overlay panes.” Ex. 1004, 5 (“The components of this window are the main view, which fills the window, and three overlay panes: an information and search pane on the left, a thumbnail pane along the bottom, and a map pane in the upper-right corner.”). We agree with and find credible Dr. Bajaj’s testimony that Snavely’s description of these panes as “overlay” panes confirms that “the main view image is behind the images shown in the map pane, the information pane, and the thumbnail pane.” Ex. 2007 ¶ 61 (citing Ex. 1004, 5). Additional support is found in Dr. Forsyth’s deposition testimony, where he explained that one of ordinary skill would have understood “overlay panes” to be “on top of” a main display:” slip op. at 38

  • ExcludeMotion to exclude, deniedDenied

    “E. Patent Owner’s Motion to Strike and Motion to Exclude Patent Owner filed a Motion to Strike certain portions of the Third Munford Declaration (Exhibit 1020) and its Appendices, which Petitioner submitted to show that Snavely and Irani were publicly accessible before the critical date of the ’518 patent. Paper 30. Patent Owner also filed a Motion to Exclude certain Appendices of the Second Munford Declaration (Exhibit 1016) and Third Munford Declaration, which Petitioner also submitted to show public accessibility of Snavely and Irani. Paper 35. Because, as discussed above, we find that Petitioner has not proven by a preponderance of the evidence that the challenged claims would have been obvious over Snavely, Balfour, Irani, and Yelton, we need not reach whether Petitioner has sufficiently shown that Snavely and Irani were publicly accessible before the critical date. We, therefore, deny Patent Owner’s Motion to Strike and Motion to Exclude as moot.” slip op. at 40

  Patent outcomesUS 8,593,518 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,593,518
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution denied
  PTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,010,330
• Netskope, Inc. v. Fortinet, Inc.Institution denied
  PTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution

  The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8

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

    “B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe a claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9

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

    “3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 9,231,968
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 10, 2023 · IPR2023-00432 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because neither obviousness ground showed a reasonable likelihood of proving claims 1–4, 8–11, and 13–16 unpatentable.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’823 patent.” slip op. at 2

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

    “We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Petition as to why one of skill in the art would opt to reconfigure Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “We have reviewed the motions and the documents at issue and have considered the explanations of the confidential nature of the materials for which sealing is sought. We find there is good cause and therefore we grant the motions to seal and the associated request to enter the protective order.” slip op. at 30

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,754,823
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 10, 2023 · IPR2023-00431 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on both §103 grounds because the petition did not show a reasonable likelihood that the challenged claims required priority assignment and comparison.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’787 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in computer science (or a similar degree) with two years of work experience in developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies.” Pet. 6 (citing Ex. 1028 ¶¶ 17, 21). Patent Owner does not 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to § 103 that became effective on March 16, 2013. Because the ’787 patent claims priority, through a continuation application, to a provisional application filed before March 16, 2013, and neither party has argued that the provisions of the AIA apply at this time, we apply the pre-AIA versions of the statutory bases for unpatentability. See Ex. 1007, codes (60), (63). 3 U.S. Publication No. 2007/0174246 A1, published July 26, 2007 (Ex. 1016). 4 U.S. Publication No. 2005/0091289 A1, published April 28, 2005 (Ex. 1020). 5 U.S. Publication No. 2006/0190506 A1, published April 24, 2006 (Ex. 1019). 6 U.S. Patent No. 7,035,847 B2, filed March 15, 2002 (Ex. 1025). 7 U.S. Publication No. 2005/0120082 A1, published June 2, 2005 (Ex. 1026). proposed definition. See generally Prelim. Resp. At this juncture, we determine that the qualifications proposed by Petitioner for an ordinarily skilled artisan are consistent with the level of skill reflected in the Specification and in the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

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

    “B. Claim Construction Neither party requests that we expressly construe any claim term. Pet. 6; see generally, Prelim. Resp. At this juncture, we determine that we do not need to expressly construe any claim term for this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,642,787
• Box, Inc. And Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 8, 2023 · IPR2023-00430 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of establishing the claims’ unpatentability.

  RulingsInstitution decision

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

    “unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and the associated evidence, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

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

    “Petitioner believes that we presently need not construe any claim language expressly. Pet. 8. Patent Owner does not argue that we need to construe any claim language expressly. See generally Prelim. Resp; Prelim. Sur-Reply. Further, we do not see the need to expressly construe any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends: “[T]he claims’ earliest effective filing date is November 10, 2008. A POSA would have possessed a bachelor’s degree in computer science (or similar degree), and two years of work experience developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies. (Balakrishnan, ¶¶15-21.)” Pet. 7–8. Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp; Prelim. Sur-Reply. We find Petitioner’s position consistent with the ’622 patent and the asserted prior art, and supported by Dr. Balakrishnan’s testimony (Ex. 1028 ¶¶15–21). Therefore, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 8

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

    “We do not find Petitioner’s “natural harmony” rationale sufficient reasoning to establish why a person of skill in the art would have modified Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings to meet the claims. Shappell and Rao teach that metadata is sent first and content or raw data is sent second. They do not teach assigning priorities to the files and their associated metadata and then comparing the priorities to determine which is greater. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm would have been reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 27–28. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Id. at 25–26. The Petition does not explain why (beyond hindsight) a person of ordinary skill in the art would have modified Sigurdsson to assign and compare priorities by reconfiguring Sigurdsson’s priority algorithm when it would have been simpler always to send the metadata first and content second, as taught in Shappell and Rao. The additional arguments for combining the references presented by Petitioner (Pet. 28–32) do not overcome the failure of the references to disclose this feature of the claims.” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,003,622
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 7, 2023 · IPR2023-00429 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim under either asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

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

    “We do not find Petitioner’s “natural harmony” rationale sufficient reasoning to support why a person of ordinary skill in the art would have modified Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao teach that metadata is sent first and content or raw data is sent second. They do not teach assigning priorities to the files and their associated metadata and then comparing the priorities to determine which is greater. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm would have been reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Id. at 23. The Petition does not explain why (beyond hindsight) a person of ordinary skill in the art would have modified Sigurdsson to assign and compare priorities by reconfiguring Sigurdsson’s priority algorithm when it would have been simpler always to send the metadata first and content second, as taught in Shappell and Rao. The additional arguments for combining the references presented by Petitioner (Pet. 24–28) do not overcome the failure of the references to disclose this feature of the claims. b) Conclusion For the reasons given, we are not persuaded that Petitioner has demonstrated sufficiently that the “priority-related” limitations including limitations 1c and 1f are taught or suggested by Sigurdsson, Shappell, and Rao. We, therefore, determine that the Petition does not demonstrate a reasonable likelihood of prevailing on this obviousness challenge as to claim 1.” slip op. at 19

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

    “As discussed supra, in Section III.E, the priority-related claim limitations 1c and 1f require assignment of priority to the metadata and file and a comparison of the assigned priorities. Petitioner does not show a teaching in Brown of an assignment of priority to the metadata and file, or of a comparison of the assigned priorities, or use of a “priority assignment configuration” for assigning the priorities. Pet. 53. At most, Brown, as modified by Hesselink,4 discloses that metadata may be sent before sending files or portions of files. See id. None of the other references teaches that there is an assignment of priority to metadata or a comparison of the priorities of the metadata and files. As discussed, Brown as modified by Hesselink, at most, teaches that metadata may be transmitted before files or portions, and Shappell and Rao 4 Petitioner relies on Hesselink for disclosing the first client automatically transferring a copy of a file specifically “responsive to the user modifying a content” of the file, as recited in limitation 1b. Pet. 47 (emphasis omitted). teach that metadata is always sent before files. See discussion supra in Section III.E.1. As is discussed supra, even if the metadata is sent, or even “categorically” sent, before files are sent, that does not teach assignment of priorities or a comparison of metadata and file priorities as required by the claim limitations. Id. Nor has Petitioner sufficiently demonstrated that Shappell or Rao suggest assigning different priorities to metadata and files and comparing those priorities. As previously observed with respect to Sigurdsson, the Petition does not persuasively explain why a person of ordinary skill in the art would have modified Brown to assign and compare priorities when it would have been simpler always to send the metadata first and content second, as taught in Shappell and Rao. Accordingly, for the reasons given, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1.” slip op. at 22

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,289,607
• Vector Flow, Inc. v. Hid Global CorporationInstitution denied
  PTAB · Jul 17, 2023 · IPR2023-00353 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution of IPR challenging claims 11–15, exercising § 314(a) discretion based on the parallel litigation’s timing, investment, and issue overlap.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied

    “Although we agree with Patent Owner that a stay appears unlikely even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Also, we do not understand the statements in CAO Lighting Patent Owner highlights as setting forth a general policy by the district judge. Rather, in that case, although the timing and issue overlap factors weighed against granting a stay, the court considered other factors as well. See CAO Lighting, 2022 WL 17752270 at *2. We accordingly treat this factor as neutral.” slip op. at 19

  • Expert testimonyOther

    “Importantly, Petitioner never advances any firm position on how the terms “unique” and “exclusively” should properly be understood in this context, limiting the basis on which we might fully evaluate Petitioner’s argument. Instead, Petitioner’s general position is that it “does not believe express claim construction is necessary at this time for this IPR.” Pet. 14. More specifically, Petitioner asserts that “it is possible” that the terms “may be interpreted to require that a defined user profile have access privileges and credentials that are unique and exclusive to the underlying user, e.g., which are not shared by any other user or user profile in the system.” Id. at 40 (emphases added). Petitioner’s expert, Dr. Madisetti, offers no clarification. See Ex. 1002 ¶ 103 (asserting that “it is possible that the words ‘unique’ and ‘exclusively’ could be interpreted” in the same way). Patent Owner disagrees with Petitioner’s speculation as to the “possible” interpretation of the terms. Prelim. Resp. 21–26. But we need not resolve that disagreement to conclude that Petitioner’s analysis fails to articulate a “compelling” meritorious challenge. A conclusion of unpatentability cannot “plainly” follow from an analysis that declines to offer nothing more than “possibilities” as to how the claims might be understood.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “6 Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering with at least two years’ experience in distributed or network-based computer systems, and would have had a working knowledge about various ways to receive data from network-connected devices (such as sensors) and then process and/or act upon that data as needed.” Pet. 11. Petitioner adds that “[a] person could also have qualified with more education and less technical experience, or vice versa.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Madisetti. Ex. 1003 ¶ 16. Patent Owner does not state whether it agrees or disagrees with Petitioner’s proposal. Nevertheless, we find Petitioner’s proposal consistent with the level of skill reflected by the prior art and accordingly apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 24

  Discretionary denial
  Patents in suitUS 8,234,704
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc And Intent Iq, LLCInstitution denied
  PTAB · Jun 6, 2023 · IPR2023-00227 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution of review of claims 36 and 37 as time-barred under § 315(b), and denied the motion for joinder as moot.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barDenied

    “instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served Petitioner with a complaint alleging infringement of the ’398 Patent in September 2021. Ex. 1016. Petitioner filed the Petition more than one year later on November 18, 2022. Pet. 80. Petitioner relies on its request to join the Meta IPR to avoid the time bar of 35 U.S.C. § 315(b). Pet. 9 (“Because Petitioner files an accompanying motion for” slip op. at 6

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “In any event, in addition to the mootness of Petitioner’s Motion for Joinder due to termination of the Meta IPR, we are not persuaded that joinder would have been appropriate. More specifically, we are not persuaded by Petitioner’s arguments that “joinder will have little, if any impact on the Meta IPR because . . . the schedule would be unaffected.” Mot. 3; see also Mot. 4 (“Joinder will not affect the schedule in the Meta IPR.”). We note that stipulated Due Date 2 for filing a reply in the Meta IPR was May 2, 2023. See IPR2022-00773, Paper 14. In view of the fact that stipulated Due Date 2 in the Meta IPR has passed, and no reply has been filed in the Meta IPR, Petitioner does not sufficiently address how “the requested joinder will not create any additional burden for the Patent Owner or the Board and will not require any additional time or resources.” Pet. Prelim. Reply 1. As pointed out by Patent Owner, “even if this proceeding went forward by essentially ‘picking up’ where the Meta . . . IPR left off, the existing schedule [of the Meta IPR] would need to be pushed back significantly, to allow time after institution for Petitioner[] to depose Patent Owner’s expert and prepare a reply.” PO Prelim. Sur-Reply 2. Because Petitioner does not meaningfully address the impact joinder would have had on the Meta IPR schedule, joinder also would not have been appropriate.” slip op. at 7

  Discretionary denial
  Patents in suitUS 8,677,398

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