• Juniper Networks, Inc. v. Smart Path Connections LLCInstitution denied
  PTAB · Oct 20, 2022 · IPR2022-00815 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Juniper did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We focus on the primary articulation of Petitioner, because the alternative articulation is vague by using the term “fewer” which indicates no lower bound. The primary articulation is supported by the testimony of Dr. Lavian (Ex. 1003 ¶ 67), and appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Patent Owner has not disputed Petitioner’s assertion of the level of ordinary skill in the art. Nor has Patent Owner proposed its own statement of the level of ordinary skill in the art. Prelim. Resp. 16. We adopt Petitioner’s primary articulation of the level of ordinary skill in the art, i.e., that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and three to four years of experience in the design and development of telecommunication networks, systems, equipment, and components.” See Pet. 6. C.” slip op. at 12

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

    “serves each client node 24 (local to each edge device) as though it were physically connected to one of the hub ports. Id. at 5:16–19. We observe nothing in the Specification to suggest that HUB device 30 is an originator of communication. Rather, it serves to facilitate communication between devices connected to it through a network. Consistent with applying the term’s plain and ordinary meaning in light of the Specification, we construe “hub” as a circuit connecting components coupled to it through a network for effecting communication therebetween. No other express claim construction is necessary for this decision on” slip op. at 15

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

    “First, “hub,” as we have construed above means a circuit connecting components coupled to it through a network for effecting communication therebetween. As Petitioner has expressly recognized, Figure 1 of the ’010 patent shows a hub network device 30 that connects edge devices 26 to each other through network 22. Pet. 13 (citing Ex. 1001, Fig. 1). As PacketStar itself describes, and as Patent Owner notes, the two Multiservice Media Gateways shown in PacketStar’s Figure 3-4 are originating and terminating nodes and do not connect two devices coupled to them through the ATM network to complete communication therebetween. Ex. 1005, 69; Prelim. Resp., 35–36. Patent Owner correctly states that Figure 3-4 depicts functionality relating to alternate routing between the two gateways themselves in the event of a failure in one route through the network. Id. at 36 (citing Ex. 1005, 68–70). Patent Owner also correctly states that Figure 3-4 of PacketStar shows a pair of gateway devices acting as an originating node and a terminating node communicating with each other directly via an ATM network without a hub. Id. at 41. Contrary to Petitioner’s assertion, the media gateway devices shown in Figure 3-4 of PacketStar are unlike network device 30 (“HUB”) in Figure 1 of the ’010 patent and do not constitute a “hub,” whether or not it is configured as a server or client. Second, Petitioner cites to the same two Multiservice Media Gateway devices in PacketStar’s Figure 3-4 as the plurality of edge devices recited in limitation [1.2]. Pet. 17–18. That is problematic for Petitioner, because as required by limitation [1.3], each edge device must connect to the hub through a network and communicate with the hub through a packet-oriented Layer 2 communication protocol. That means the hub and the edge devices must be different structures and cannot be met by the same device.” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,386,010
• Microsoft Corporation v. Throughputer, Inc.Institution denied
  PTAB · Oct 11, 2022 · IPR2022-00758 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution on claims 1–23 because Sandstrom-1 was not prior art in light of the patent’s priority date, so Petitioner did not meet the institution threshold.

  RulingsInstitution decision

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

    “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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’242 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

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

    “Office was satisfied that the ’731 application, which had issued as the ’953 patent, properly claimed priority to the preceding applications in the 2012 line, and that all intermediate applications also included proper priority claims. It thus follows that, absent any defects in the priority claims of the subsequent applications, including the application that issued as the ’242 patent, the remedial steps taken by the applicant and approved by the Office during prosecution and post-issuance of the ’953 patent also render proper the priority claims of the subsequent applications. Petitioner has not persuasively pointed us to any additional defects not addressed previously by the Office in the priority chain of the ’242 patent in the 2012 line. Nor has Petitioner identified legal authority for the Board to revisit the January 2021 Decision’s finding that the priority claims of the ’731 application met the relevant statutory and regulatory criteria. See Ex. 1008, 4 (“[T]he reference as set forth in the [second corrected ADS] filed March 19, 2018 complies with 35 U.S.C. §§ 120 and 119(e) and 37 [C.F.R.] §§ 1.78(d)(2) and 1.78(a)(3).”).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “For these reasons, Petitioner has not persuaded us that there is a break in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

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

    “in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,430,242
• ADT LLC v. Vivint, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00634 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because ADT did not show a reasonable likelihood of prevailing on any challenged claim, with grounds lacking particularity and adequate motivation to combine.

  RulingsInstitution decision

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

    “§ 42.4(a), we may not institute an IPR unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). Taking into account Vivint’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that ADT would prevail in challenging any one of claims 1, 2, 9–11, 26, 31, and 33–35 of the ’552 patent as unpatentable. We, therefore, deny ADT’s Petition.” slip op. at 2

  • BurdenDecided for patent owner

    “the combination of Ulrich and Mathias. See Pet. 10–25. Based on the current record, we are not persuaded that ADT has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least one of claims 1, 2, and 9–11. Specifically, ADT has failed to articulate, with reasonable clarity, (1) which teachings of each prior art reference it relies on to show that the combination of Ulrich and Mathias accounts for all the limitations of claims 1, 2, and 9–11 and (2) why a person having ordinary skill in the art would have been motivated to combine the teachings of these references.” slip op. at 11

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

    “and Mathias, the reasoning provided is generic and conclusory, and does not clarify sufficiently which teachings from each reference it combines to account for all the limitations of claims 1, 2, and 9–11. In Belden Inc. v. Berk-Tek LLC, the Federal Circuit explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, a rationale to combine must not rely on hindsight, but must “imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”).” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “fares no better. The Federal Circuit has explained, “[c]onclusory expert testimony does not qualify as substantial evidence.” TQ Delta, LLC v. Cisco Federal Circuit has found that, when “[t]he expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” that the “expert’s testimony on obviousness was essentially a conclusory statement.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012); KSR Int’l, 550 U.S. at 418 (“A patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Innogenetics, N.V. v. Abbott Lab’ys, 512 F.3d 1363, 1373–74 (Fed. Cir. 2008)) (finding that “vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness”). Dr. Rhyne’s declaration testimony sets forth a generic and conclusory statement without explaining how the teachings of Ulrich and Mathias could be combined, which combination of elements in Ulrich and Mathias would yield the “expected benefits,” or how any specific combination would operate or read on the limitations of independent claim 1. Accordingly, Dr. Rhyne’s supporting testimony also is deficient. 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.”)” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,392,552
• ADT LLC v. Vivint, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00642 · APJ Iftikhar Ahmed · IPR · Institution

  The Board denied institution because ADT did not clearly map the references to the challenged claims or adequately explain why a skilled artisan would combine them.

  RulingsInstitution decision

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

    “§ 42.4(a), we may not institute an IPR unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). Taking into account Vivint’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that ADT would prevail in challenging any one of claims 1, 2, 10–14, and 25–27 of the ’769 patent as unpatentable. We, therefore, deny ADT’s Petition.” slip op. at 2

  • BurdenDenied

    “U.S.C. § 311(a), that identifies the challenged claims and the grounds for challenge with particularity, [35 U.S.C.] § 312(a)(3).” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1351 (2018); see also 37 C.F.R. § 42.104(b) (specifying necessary elements of a petition). Under 35 U.S.C. § 314(a), an IPR can be instituted only if there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). Even when a petitioner demonstrates a reasonable likelihood as to at least one claim, however, institution of an IPR remains discretionary. SAS Inst., 138 S. Ct. at 1351 (“§ 314(a) invests the Director with discretion on the question whether to institute review”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)” slip op. at 11

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

    “Ulrich and Mathias, the reasoning provided is generic and does not clarify sufficiently which teachings from each reference it combines to account for all the limitations of claims 1, 2, and 10–14. In Belden Inc. v. Berk-Tek LLC, the Federal Circuit explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, a rationale to combine must not rely on hindsight, but must “imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”).” slip op. at 15

  • Expert testimonyPetitioner expert discountedOther

    “that “[s]imilarity in subject matter is insufficient,” by itself, “to establish that a [person having ordinary skill in the art] would have been motivated to combine references.” Prelim. Resp. 23–24 (citing Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (unpublished); Salpeter v. ARP Wave, LLC, IPR2019-01384, Paper 12 at 17 (PTAB Jan. 27, 2020)). Similar to Personal Web Technologies, ADT’s “reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined.” Personal Web Techs., 848 F.3d at 993; see Prelim. Resp. 25 (citing Apple Inc. v. MPH Techs. Oy, 28 F.4th 254, 262–63 (Fed. Cir. 2022) (finding expert testimony conclusory and improperly guided by hindsight based on use of the phrases: “would naturally have included”; “would be logical”; and “could be, and most logically would be”)). ADT neither explains why a person having ordinary skill in the art would have been motivated to combine the teachings of Ulrich and Mathias—as we understand ADT to be arguing—nor does it explain why a person having ordinary skill in the art would have been motivated to modify either Ulrich or Mathias such that either reference may be asserted in a single-reference obviousness ground. In addition, because Dr. Rhyne’s declaration testimony mirrors the arguments presented by ADT, his supporting testimony fares no better. Compare Pet. 13, with Ex. 1009 ¶¶ 64, 65.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,700,769
• F5, Inc. v. Sunstone Information Defense, Inc.Institution denied
  PTAB · Aug 9, 2022 · IPR2022-00484 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–6, 8, 12, 16, 21–25, 27, 28, 32, and 36 unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute an inter partes review on any claim of the ’682 patent on any asserted ground of unpatentability.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “of the alleged invention “will have had either a master’s degree in computer science with at least two-years’ experience developing technology for detecting malware affecting internet browsers or a bachelor’s degree with four years of said experience.” Pet. 12 (citing Ex. 1006 ¶ 42). Patent Owner has not proposed a differently stated level of ordinary skill in the art. See generally Prelim. Resp. Nor has Patent Owner opposed Petitioner’s statement of the level of ordinary skill. Petitioner’s assertion is supported by the testimony of Dr. Jakobsson. Ex. 1006 ¶ 42. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We adopt Petitioner’s statement of the level of ordinary skill in the art, but delete the modifier “at least” to avoid vagueness and to keep the level of ordinary skill from extending into a level above “ordinary.” B.” slip op. at 10

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

    “Only those claim terms that are in controversy need to be construed, 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); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither Petitioner nor Patent Owner has proposed a construction for any claim term. Patent Owner states that no claim construction is necessary to determine whether review should be instituted. Prelim. Resp. 11. We determine that no express claim construction is necessary for this Decision.” slip op. at 11

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

    “First, Petitioner splits limitation [1.d] into two parts, and applies Chen’s teachings to meet the first part, i.e., subsections (i) and (ii) of limitation [1.d] (Pet. 23–28), and Ozzie’s teachings to meet the second part, i.e., subsection (iii) of limitation [1.d] (Pet. 28). There is no explanation by Petitioner of how the combination of Ozzie and Chen results in satisfaction of all three subsections (i), (ii), and (iii) of limitation [1.d] at the same time in a single embodiment. On the record presented by Petitioner, at most only subsections (i) and (ii) of limitation [1.d] are met, or subsection (iii) is met, but not all three subsections (i), (ii), and (iii) at once as is required by claim 1. One seeking to establish obviousness based on more than one reference must articulate sufficient reasoning with rational underpinning to combine teachings. See KSR Int’l, 550 U.S. at 418. Petitioner has not presented reasoning with rational underpinning to support satisfaction of all three subsections (i), (ii), and (iii) together in a single embodiment. The carving up of limitation [1.d] into two parts and satisfying the two parts separately by relying on different references, one for each part, fails to treat limitation [1.d] as a whole and is improper.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,958,682
• F5, Inc. v. Sunstone Information Defense, Inc.Institution denied
  PTAB · Jul 28, 2022 · IPR2022-00482 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–18 and 37–39 were unpatentable over any asserted obviousness ground.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute an inter partes review on any claim of the ’870 patent on any asserted ground of unpatentability.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner has not proposed a differently stated level of ordinary skill in the art. Nor has Patent Owner opposed Petitioner’s statement of the level of ordinary skill. 3 Patent Owner submits the Declaration of Nenad Medvidović, Ph.D. in support of its Preliminary Response. Ex. 2001. 4 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Based on the record before us, the ’870 patent has an effective filing date prior to the effective date of the applicable AIA amendments (March 16, 2013). Therefore, we apply the pre-AIA version of 35 U.S.C. § 103. Petitioner’s assertion is supported by the testimony of Dr. Jacobsson. Ex. 1006 ¶ 42. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We adopt Petitioner’s statement of the level of ordinary skill in the art, but delete the modifier “at least” to avoid vagueness and to keep the level of ordinary skill from extending into a level above “ordinary.” B.” slip op. at 9

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

    “Only those claim terms that are in controversy need to be construed, 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); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither Petitioner nor Patent Owner has proposed a construction for any claim term. Patent Owner states that no claim construction is necessary to determine whether review should be instituted. Prelim. Resp. 11. We determine that no express claim construction is necessary for this Decision. C.” slip op. at 11

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

    “One seeking to establish obviousness based on more than one reference must articulate sufficient reasoning with rational underpinning to combine teachings. See KSR Int’l, 550 U.S. at 418. Petitioner has not presented reasoning with rational underpinning to support satisfaction of all three subsections (i), (ii), and (iii) together in a single embodiment. The carving up of limitation [1.d] into two parts and satisfying the two parts separately by relying on different references, one for each part, fails to treat limitation [1.d] as a whole and is improper. Second, Petitioner identifies Chen’s user actions as the claimed response message. Pet. 21. But Chen’s “user actions” are canonical, i.e., theoretical possibility, and used only for formal reasoning analysis, as discussed above in Section II.C.3. They have not been shown by Petitioner to be actual responses in a real communication between a server and a user. Chen’s user action or user actions do not constitute a response message. Further, Petitioner has not shown how Chen’s canonical user action corresponds in kind to any actual response message in Ozzie. Petitioner’s application of Chen in Ozzie to make a real response message from Chen’s canonical user actions reflects application of inappropriate hindsight reasoning and is not reasonably suggested by the applied prior art. Third, Petitioner identifies Chen’s program invariant as the claimed prediction of a response message. Pet. 21. But Chen’s “program invariant,” as discussed above in Section II.C.3, is not any expected or anticipated information that is returned to any server from a client. It is not the prediction of any response message. Further, Petitioner has not shown how Chen’s program invariant corresponds in kind to any prediction of an actual response message in Ozzie. Petitioner’s application of Chen in Ozzie to make a prediction of a response message from Chen’s program invariant reflects application of inappropriate hindsight reasoning and is not reasonably suggested by the applied prior art.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,122,870
• Tencent Technology (Shenzhen) Co. Ltd. v. Yogesh RathodInstitution denied
  PTAB · Jun 27, 2022 · DER2022-00002 · APJ Michael R Zecher · DER · Institution

  The Board denied institution because Tencent did not make a sufficient showing that the named inventors conceived the invention allegedly communicated to Rathod.

  RulingsInstitution decision

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

    “that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.” 35 U.S.C. § 135(a)(1). We have authority to institute a derivation proceeding on behalf of the Director. 37 C.F.R. § 42.408(a). The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support a determination of derivation. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c).1 Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For the reasons set forth below, we conclude” slip op. at 2

  • BurdenDenied

    “is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6 To the extent Tencent expects us to scour the preliminary record to unearth supporting evidence of prior conception, we decline to do so. It is well-settled that Tencent is “master of its complaint.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). We are constrained by the arguments and evidence presented and developed in Tencent’s Petition, and we are not” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Not reached

    “6 We recognize that Tencent contends that the ’265 patent and the three applications in its priority chain lack sufficient written description support for the claimed invention. Pet. 17–28. We need not reach Tencent’s arguments that the three applications in the priority chain of the ’265 patent lack sufficient written description support for the claimed invention because, as we explain above, Tencent does not demonstrate that the named inventors in the ’371 application conceived, at any time, the inventions purportedly communicated to Mr. Rathod.” slip op. at 13

  • Expert testimonyNot reached

    “is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6” slip op. at 13

  § 112 disclosure
  Patents in suitUS 10,990,265
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Rightquestion, LLCInstitution denied
  PTAB · Jun 9, 2022 · IPR2022-00251 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6–15, and 17–21 were unpatentable over either asserted obviousness combination.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2021). We may not institute an inter partes review “unless . . . 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).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. Pet. 6 (citing Ex. 1002 ¶¶ 18, 24–26). Patent Owner states it “will apply the Petitioner’s definition of a [person of ordinary skill in the art] for the purposes of this response, but reserves the right to argue for a different definition should this Petition be instituted.” Prelim. Resp. 7.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Limitation is indefinite. Ex. 2020, 13. Patent Owner argued the limitation should be given its “[p]lain and ordinary meaning; no construction necessary.” Id. After the filing of the Petition and Preliminary Response, the district court in the District Court Case entered a Markman order construing the Secure Backup Limitation, among others. Id. at 13–15, 19. The district court construed the Secure Backup Limitation to mean “create a backup of the record that is protected from unauthorized access and transmit it to a storage service.” Id. at 15. In adopting this construction, the district court found “[t]he words of this disputed phrase have well-understood meanings:” Generally, a “backup” may be either (1) the act of backing up, or (2) a backup copy of data. e.g., See, https://www.yourdictionary.com/backup (last visited Mar. 29, 2022) (defining “backup” as “the act or an instance of backing up computer data, files, etc.” and, alternatively, as “[a] backup copy of data, a file, etc.”). Here, the claims recite “performing a . . . backup,” which aligns only with the former—performing the act of backing up. The limitation is silent as to whether the storage is secure or insecure, but requires the act be “secure.” “Secure” in this context, as already determined with respect to “secure storage,” means “protected from unauthorized access.”” slip op. at 14

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

    “another network 115] are a ‘restricted interface’ and petitioner has not offer[ed] a single piece of evidence to the contrary.” Prelim. Resp. 38. Patent Owner argues “Petitioner’s ‘expert’ does not even opine on whether [the skilled artisan] would have viewed a local interface, data bus, or another network as a restricted interface.” Id. (citing Ex. 1002 ¶¶ 100–101); see id. at 40. Indeed, neither Petitioner nor its expert provides any express construction for what a “restricted interface” is in the context of the ’512 patent, and as argued by Patent Owner (id.), neither explains sufficiently, let alone with particularity, how or why Johansson’s “local interface, data bus, or another network 115” discloses or teaches the claimed “restricted interface.” See 35 U.S.C. § 312(a)(3) (“particularity”); 37 C.F.R. § 42.104(b)(3) (“How the challenged claim is to be construed.”).” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,929,512
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · May 11, 2022 · IPR2022-00050 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on claims 1–30 because Petitioner did not show a reasonable likelihood that the asserted references qualified as prior art.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1356,1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “But, even accepting these premises, we disagree with the conclusion Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’974 application does not provide written description support for the claims of the ’638 patent merely because the scope of the claims includes a configuration that is not expressly described in that document. See Pet. 15–16, 22. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”).” slip op. at 22

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

    “D. Obviousness Grounds Petitioner contends that the subject matter of claims 1–30 of the ’638 patent would have been obvious over various combinations of Oakes-I, Oakes-II, Medina, and Roach (collectively, “the asserted references”). Pet. 5, 32–100. Petitioner argues that the asserted references are prior art because the claims of the ’638 patent are not entitled to a priority date earlier than July 28, 2017. Id. at 4–5, 11–29. Patent Owner contends that Petitioner fails to establish a reasonable likelihood of success because Petitioner fails to sufficiently show that the asserted references qualify as prior art. Prelim. Resp. 18–59. Having reviewed the parties’ arguments and evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that the asserted references are prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable based on the asserted references.” slip op. at 16

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

    “In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide16 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.17 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 11) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 12. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response.” slip op. at 37

  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,402,638
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Apr 27, 2022 · IPR2022-00049 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution for claims 20 and 22 because Petitioner did not show a reasonable likelihood that the asserted combinations rendered them obvious.

  RulingsInstitution decision

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

    “IV. CONCLUSION The Petitioner has not persuasively established that a skilled artisan would have been motivated to combine the cited references so as to render any of the challenged claims unpatentable. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of the ’638 patent is instituted; and” slip op. at 26

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

    “Pet. 25–27 (emphasis added) (alterations in original). Although this passage is somewhat lengthy, the only reasons provided for combining the relevant teachings of Garcia and Byrne are “to avoid wasting communications resources and adding delays,” “avoid wasting resources and adding delays,” and “reducing wasteful network transmission and delays.” See id. However, the only argument as to the existence of the alleged motivating waste and delay is: “Garcia sends images by ‘a mobile telephone communications network, for example a GSM/GPRS network. . . A POSITA would have known that such networks are bandwidth and resourceconstrained, and that communications over such networks take[ ] time.” Id. at 25 (quoting Ex. 1103, 11:21–12:1). In the Petition, there is no explanation or reasoning to support concluding, based on Garcia’s statement that images are sent using a mobile telephone communications network, that a skilled artisan would recognize waste and delay even if such networks are bandwidth and resource-constrained and that communications over such networks take time. See id. And, there is no explanation or reasoning for concluding that a skilled artisan would recognize that to “check for errors before the submitting” in the manner taught by Byrne would help alleviate waste and delay in Garcia’s system. The only articulated rationale to combine in the Petition is a simple, unelaborated assertion that a skilled artisan would have known that “networks are bandwidth and resource-constrained” and “communications over such networks take time.” This assertion is too general10 and conclusory to accorded much weight and is inadequate to support the finding of rationale to combine. There is no elaboration in the Petition as to what is meant by this sentence. The Petition fails to explain what pertinent knowledge a skilled artisan would have had and how exactly this would have motivated the combination of the relevant teachings of Garcia and Byrne.” slip op. at 20

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

    “Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We determine we need not explicitly construe any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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))).” slip op. at 14

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 17 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Therefore, we do not reach the arguments and evidence of the parties relating to whether Petitioner identified all the real parties in interest in the Petition, and we make no reference in this Decision to the documents and information that the parties seek to protect as confidential.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,402,638

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.