- PTAB · Oct 11, 2023 · IPR2023-00617 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 3, 12, 14, and 15 on all asserted obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons given, Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claims 1 and 12.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction 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 Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 9 (citing Mudge Decl. ¶ 87). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Mudge explains that “[a person of ordinary skill] would have understood that, while Figure 1 does not depict lines connecting interconnect 108 to core 112-1 and to L2/L3 cache hierarchy, Figure 1’s arrowed lines represent the hierarchical organization of reports and commands between components, not their physical connections.” Mudge Decl. ¶ 99. Dr. Mudge’s testimony is supported by Bose’s description of Figure 1 as showing “a hierarchical power-performance monitor.” Ex. 1005, 3:59–61. Elsewhere, Bose refers to this figure as showing a “management hierarchy” (id. at 6:18) and explains that “[t]o clearly define the responsibility of each layer of the hierarchy, the layers are designed and configured such that the layers report upward and command downward in the hierarchy” (id. at 6:49–52). This disclosure in Bose supports Dr. Mudge’s conclusion that “[b]ased on Bose’s depicted and described hierarchical organization of reports and commands between components, and, based on Bose’s use of the well-known term of art ‘interconnect,’ it would have been obvious to a [person of ordinary skill] that Bose’s interconnect 108 couples and connects to each core and to L2/L3 cache hierarchy.” Mudge Decl. ¶ 99. We find that on this record Petitioner has demonstrated sufficiently at this stage that this element is met by Bose.” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - PTAB · Oct 11, 2023 · IPR2023-00567 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Qualcomm would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We must also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“physics, or a related field” and would have had “at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 13 (citing Mudge Decl. ¶ 25). At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction 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 Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 14 (citing Mudge Decl. ¶¶ 77–78). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Aug 30, 2023 · IPR2023-00456 · APJ James P Calve · IPR · Institution
Instituted IPR on claims 1–28 on all three §103 grounds based on the Board’s finding of a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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 shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“in computer science, computer engineering, or electrical engineering (or equivalent experience) and at least two years’ practical experience with computer networking and computer security.” Pet. 15. Patent Owner asserts a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of networks and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 13 (asserting that the positions in the Preliminary Response are the same under either proposal). The two formulations are similar, differing mainly in the level of experience required. We adopt Patent Owner’s proposal as more consistent with the ’856 patent and prior art, but our analysis would be the same under either party’s proposal.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 claims “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 assert that claim terms should receive their plain and ordinary meaning, and no claim terms require construction. Pet. 16; Prelim. Resp. 13–14. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable expectation of success (Prelim. Resp. 24), “[t]he reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Absolute predictability of success is not required. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Given the broad scope of natively mounted, the disclosure that AWS provides software to natively mount files (Ex. 1001, 5:23–32), and Burdett’s similar native mounting of cloud files to a scanning service (see Ex. 1004, 23:33–24:18, 25:34–55, 27:20–29:41), Petitioner has shown a reasonable expectation of success in combining Burdett and FortiSandbox to meet this limitation. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339 (Fed. Cir. 2020) (“The specification of the [patent-at-issue] is entirely silent on how to transmit user locations and maps from a server to a user’s mobile device, suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this.”). Descriptions of native mounting in the ’856 patent, FortiSandbox, and Burdett indicate that native mounting can be accomplished with a reasonable expectation of success. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (“[T]he Board’s observation that appellant did not provide the type of detail in his specification that he now argues is necessary in prior art references supports the Board’s finding that one skilled in the art would have known how to implement the features of the references.”). Regarding the motivation to combine, FortiSandbox natively mounts network shares to security devices to scan suspicious files for malware (Ex. 1005, 113–115; Pet. 18–19), and Petitioner contends that this technique would improve Burdett similarly to perform malware scans of public cloud store files via native communications while preventing users from accessing malicious files (Pet. 19, 29–30). See KSR, 550 U.S. at 417.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,036,856 - Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 10,642,787 - Box, Inc. And Dropbox, Inc. v. Topia Technology, Inc.Institution deniedPTAB · 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 PhillipsPatents in suitUS 11,003,622 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood of success on the Athas anticipation and Hallak–Matthys obviousness grounds; it did not reach the Scoda–Matthys ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’457 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that all terms should have their plain and ordinary meaning. Pet. 14. Patent Owner responds that “[t]he ’457 Patent expressly defines a number of terms that are used in the claims,” and highlights several such definitions for the terms “web page,” “network appliance,” “browser,” and “embedded script.” Prelim. Resp. 6–7. In addition, Patent Owner proposes a construction for the second recitation in claim 1 of the phrase “a number of packets” that Patent Owner alleges is “consistent with both the specification and figures of the ’457 Patent.” Id. at 7–8. Having considered the positions of the parties, we find that for the purpose of this decision, it is unnecessary expressly to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We, therefore, do not agree that Petitioner’s alleged failure to expressly address the meaning of claim terms should prevent us from instituting review as asserted by Patent Owner. See, e.g.,” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). At this juncture, Patent Owner does not provide a description of an ordinarily skilled artisan. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner. Based on the current record, this proposal is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Williams testifies that “a [person of ordinary skill] would recognize that there are advantages analyzing web page data, including metadata and packets to provide a more robust monitoring and filtering ability.” Williams Decl. ¶ 150. He concludes that “it would have been obvious to adapt Hallak to utilize metadata and packet level analytics as disclosed in Matthys to produce more detailed filtering and detection in protecting web clients and web-based applications.” Id. ¶ 151. He reasons further that “[t]he use of metadata and data packet analytics as suggested by Matthys into the Hallak process would have been an obvious implementation for a [person of ordinary skill] and would have also been done expecting success.” Id. At this stage we find this testimony consistent with the record, helpful, and credible. On the other hand, we do not find Patent Owner’s arguments to the contrary to be supported by any evidence of record at this stage. Prelim. Resp. 22–28. For example, Patent Owner argues that “[t]he Petition fails to explain how adding a script to be processed at the client would protect web clients or how this would be compatible with Hallak’s system.” Prelim. Resp. 23. But Dr. Williams testifies that adapting Hallak to use Matthys’s metadata and packet-level analytics would “produce more detailed filtering and detection in protecting web clients and web-based applications.” Williams Decl. ¶ 151. We, therefore, are not persuaded that Petitioner’s showing of motivation to combine these references is “deficient.” Prelim. Resp. 22–25. Nor do we agree, for reasons discussed supra, that Petitioner’s element-by-element analysis “fails to provide any explanation or specific details,” or that Dr. Williams “does not provide any clarification.” Id. at 25– 28.” slip op. at 23
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,924,457 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00185 · APJ Thomas L Giannetti · IPR · Institution
Instituted inter partes review of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success and compelling merits for the WebShield anticipation challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.” (“Guidance Memo”).7 The Director’s Guidance Memo states that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Id. at 2. “Compelling, meritorious challenges are those 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.” Id. at 4. For the reasons that follow, although Fintiv factors 1–5 weigh in favor of denying institution, we determine that the Petition presents compelling merits, and on this record, we thus decline to exercise our discretion to deny the Petition. We first discuss application of the Fintiv factors to this case.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 established a reasonable likelihood that it would prevail with respect to at least one challenged claim. In addition, for the reasons stated, we are not persuaded to exercise our discretion to deny the Petition under 35 U.S.C. § 314(a). We, therefore, institute inter partes review as to all of the challenged claims of the ’498 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner proposes that all terms should be given their plain and ordinary meaning. Pet. 17. Patent Owner responds that “[t]he ’498 Patent expressly defines a number of terms that are used in the claims,” namely, “web page,” “network appliance,” “browser,” and “embedded script.” Prelim. Resp. 7–8. Patent Owner contends that the Petition “fails to address the specification’s definitions of claim terms, much less demonstrate that the cited references disclose each claimed element according to its appropriate meaning.” Id. at 7. Having considered the positions of the parties, we find that for the purpose of this decision, it is unnecessary expressly to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We therefore do not agree that Petitioner’s alleged failure to address the meaning of claim terms should prevent us from instituting review as asserted by Patent Owner. See, e.g., Prelim. Resp. 20– 21. Patent Owner’s arguments regarding the asserted grounds of” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation marks omitted). Petitioner asserts that a person of ordinary skill in the art of the ’498 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 16 (citing Ex. 1007 ¶¶ 30– 9 Neither party presents evidence or arguments regarding objective evidence of non-obviousness at this stage. 31). At this juncture, Patent Owner does not provide a description of an ordinarily skilled artisan. For purposes of this decision, we adopt the level of ordinary skill as articulated by Petitioner. Based on the current record, this proposal is consistent with the ’498 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,503,498 - Vector Flow, Inc. v. Hid Global CorporationInstitution deniedPTAB · 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 denialPatents in suitUS 8,234,704 - Trend Micro Inc. v. Cupp Computing AsAll claims unpatentablePTAB · Apr 14, 2023 · IPR2019-00641 · APJ Thomas L Giannetti · IPR · Remand
On remand, the Board determined claim 7 unpatentable as obvious over Sikdar and RFC 2616, and separately over Sikdar and Wright.
RulingsRemand decision- RemandOther
“It is with this determination by the Federal Circuit, which is binding on this panel, that we evaluate on remand Petitioner’s contention that the “dynamically isolating” limitation is met by Sikdar. PO Resp. 32–40; Sur-reply 12–16. Quoting the Board’s construction of “dynamically isolating,” the Federal Circuit’s Decision specifically states that “Sikdar clearly discloses ‘the use of DHCP or other source of addresses in connection with a NAT engine to translate IP addresses.’” Decision 10. The Federal Circuit, therefore, held that Sikdar discloses “dynamically isolating” under the Board’s construction adopted by the parties: This claim construction does not require the use of DHCP or a source that is, in some narrowing way, similar or comparable to DHCP. By its broad terms, this construction simply requires any source of addresses—“DHCP or other source of addresses.” Id. The Federal Circuit further explained its holding that Sikdar teaches “dynamically isolating”: Sikdar teaches this aspect of the claim construction in several ways: It discloses that the SPU “generates” the public IP address, says that this address is “usually” the address “assigned to” the firewall, and describes, in an alternative embodiment, a one-to-one mapping of private and public addresses. These disclosures teach a “source of addresses in connection with a NAT engine to translate IP addresses.” Id. (citation omitted). In reaching this conclusion, the Federal Circuit discussed and rejected the reasoning advanced by Patent Owner and the” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Relying on the specification and the claims, in our Final Written Decision, we construed “dynamically isolating” as including the use of DHCP or other source of addresses in connection with a NAT engine to translate IP addresses. FWD 20. Before the Federal Circuit, the Board’s construction for this claim term was “accepted as correct by both parties.” Decision 7. We therefore maintain our construction here. We did not find it necessary to construe any other claim terms in our” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In a recent decision, the Federal Circuit reminded us that “[t]he motivation-to-combine analysis is a flexible one. Any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023) (citing KSR Int’l Co. v. Teleflex, 550 U.S. 398, 420 (2007)) (alterations and internal quotation marks omitted). The Federal Circuit further instructed that “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. (quoting KSR, 550 U.S. at 421 (alterations omitted.)). Applying the Federal Circuit’s “flexible” standard, we find that for the reasons given, Petitioner has demonstrated a motivation to combine the teachings of Sikdar and RFC 2616, and Sikdar and Wright, as proposed by Petitioner, with a reasonable expectation of success. We find that Petitioner’s answer to Patent Owner’s argument that identifying an application identifies the computer running the application is persuasive, and the testimony of Dr. Jakobsson is credible on this issue. Jakobsson Decl. ¶¶ 157–163; Jakobsson Supp. Decl. ¶ 54. For example, Dr. Jakobsson testifies that the “user agent” field identifies a particular web browser, not a computer, and therefore does not “reveal the requesting computer’s private IP address.” Jakobsson Supp. Decl. ¶ 54. We find further support for this in Dr. Medvidovic’s testimony. See Ex. 1022, 129:14–130:3 (“Q. In our example where the user agent identifies the browser Internet Explorer 6.1, that doesn’t identify a computer, right? A. [by Dr. Medvidovic] That does not identify the computer.”) In sum, for the reasons given, we find that a person of ordinary skill would have been motivated to combine the teachings of Sikdar and RFC 2616 and Sikdar and Wright with a reasonable expectation of success.” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for patent owner
“supported by “objective indicia” (also called “secondary considerations”) of non-obviousness, including long-felt need, failure of others, and skepticism by experts in the industry. PO Resp. 41–44. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Before reaching a decision on obviousness of claim 7, we must weigh these secondary considerations. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075–76 (Fed. Cir. 2012). “The patentee bears the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). To determine whether the patentee has met that burden, we consider the correspondence between the objective evidence and the claim scope. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citation omitted). We concluded, in our Final Written Decision, that Patent Owner had failed to meet its burden. FWD 51–54. We agreed with Petitioner that Patent Owner had failed to establish the required nexus to its claims. Id. at 52–53. We agreed also that Patent Owner had not provided convincing evidence supporting the existence of such objective indicia. Id. at 53. We find that, for the reasons given in our Final Written Decision, which we adopt for this Final Written Decision on Remand, Patent Owner’s evidence of secondary factors is insubstantial and unconvincing, and we therefore give it minimal weight in considering the obviousness of the challenged claims.” slip op. at 29
Patent outcomesUS 9,756,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,756,079 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01600 · APJ John D Hamann · IPR · Final written decision
Claim 1 is unpatentable under § 103 over Lalancette; the Board did not reach the Kalanick/Kemler or Lalancette/Kalanick grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“definition, with a qualification. Dec. on Inst. 17. In particular, we determined that a person of ordinary skill in the art also would have had at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. We also noted that from our review of the ’525 patent and the cited prior art, requiring specific experience with data privacy policies and protection models was not warranted, given the focus of the ’525 patent on more general principles of cellular communications and signal transmission. Id. On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’525 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no express construction is needed for this term because Petitioner shows that Lalancette teaches this limitation under either parties’ proposed construction, and Patent Owner does not dispute that Lalancette teaches the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”); see also infra Section V.B (finding that Petitioner demonstrates that Lalancette teaches “a display associated with a front windshield of a vehicle”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal representing an indicator, rather than reciting that the controller generates the indicator. Ex. 1001, 8:13–18. And the Specification of the ’525 patent is replete with examples of the controller generating signals that represent an indicator for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65.” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 29. The language of claim 1 sets forth no such requirements. Ex. 1001, 8:8–23. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. Id.” slip op. at 12
Patent outcomesUS 10,395,525 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,395,525
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.