• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00836 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 28

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

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5.” slip op. at 23

  Patent outcomesUS 7,069,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,069,560
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00835 · APJ Kevin C Trock · IPR · Remand

  Claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable over Kiss and FIPA97; the remaining remanded claims were not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “On appeal, the Federal Circuit affirmed all of our determinations of unpatentability of challenged claims. See Microsoft, 2022 WL 989403, at *1. The Federal Circuit also affirmed our “determination of no proven unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and 53–55 of the ’560 patent.” Id. The Federal Circuit reversed certain findings we made in concluding that claims 8–10, 63, and 86–89 of the ’115 patent and claims 10, 11, and 28 of the ’560 patent had not been proven unpatentable and remanded for further consideration of those claims. Id. Upon our authorization (Paper 45), the parties filed additional briefing limited to addressing the remanded claims. See Petitioner’s Remand Opening Brief (Paper 50, “Pet. Remand Opening Br.”), Patent Owner’s Remand Opening Brief (Paper 51, “PO Remand Opening Br.”), Petitioner’s Remand Response Brief (Paper 53,” slip op. at 6

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

    “Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5.” slip op. at 23

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

    “In the context of claim 1 from which claim 8 depends, Petitioner argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  Patent outcomesUS 7,069,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,069,560
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00814 · APJ Kevin C Trock · IPR · Remand

  Claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable as obvious over Kiss and FIPA97; claims 9, 10, and 63 of the ’115 patent and …

  RulingsRemand decision

  • RemandOther

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • BurdenDecided for patent owner

    “We note, as an initial matter, that it is Petitioner’s burden to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Despite having been afforded an opportunity on remand to address our claim construction set forth in the Final Written Decisions, Petitioner does not address in its how the cited prior art teaches or suggests the limitation under our construction. See Pet. Remand Opening Br. 3–5, 7. Thus, Petitioner does not meet its burden to show by a preponderance of the evidence that claims 9, 10, and 63 of the ’115 patent and claim 28 of the ’560 patent are unpatentable over the combination of Kiss and FIPA97. In addition, for the reasons discussed below, Petitioner’s cited evidence does not show sufficiently that the cited prior art teaches or suggests “process characteristics” recited in the claims under our construction of the term—i.e., “characteristics of a process for an agent.” As noted above, Petitioner argued during trial that FIPA97’s “interaction-protocols” parameter is “analogous to both the Machine Type and Language examples [of Process Characteristics] from the specification.” See Pet. Reply 78. On remand, Petitioner does not present this “similarity” argument. See generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Although Petitioner’s argument on the alleged similarity of FIPA97’s “interaction-protocols” to the Specification’s examples of Process Characteristics may be relevant to the question of whether FIPA97 teaches or suggests the recited “process characteristics” under our construction, we are not persuaded that Petitioner has cited sufficient evidence to show FIPA97’s “interaction-protocols” parameter is analogous to the Specification’s Machine Type and Language examples.” slip op. at 32

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00811 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00810 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent were held unpatentable under §103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  • BurdenNot shown unpatentable

    “We note, as an initial matter, that it is Petitioner’s burden to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Despite having been afforded an opportunity on remand to address our claim construction set forth in the Final Written Decisions, Petitioner does not address in its how the cited prior art teaches or suggests the limitation under our construction. See Pet. Remand Opening Br. 3–5, 7. Thus, Petitioner does not meet its burden to show by a preponderance of the evidence that claims 9, 10, and 63 of the ’115 patent and claim 28 of the ’560 patent are unpatentable over the combination of Kiss and FIPA97. In addition, for the reasons discussed below, Petitioner’s cited evidence does not show sufficiently that the cited prior art teaches or suggests “process characteristics” recited in the claims under our construction of the term—i.e., “characteristics of a process for an agent.” As noted above, Petitioner argued during trial that FIPA97’s “interaction-protocols” parameter is “analogous to both the Machine Type and Language examples [of Process Characteristics] from the specification.” See Pet. Reply 78. On remand, Petitioner does not present this “similarity” argument. See generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Although Petitioner’s argument on the alleged similarity of FIPA97’s “interaction-protocols” to the Specification’s examples of Process Characteristics may be relevant to the question of whether FIPA97 teaches or suggests the recited “process characteristics” under our construction, we are not persuaded that Petitioner has cited sufficient evidence to show FIPA97’s “interaction-protocols” parameter is analogous to the Specification’s Machine Type and Language examples. First, Petitioner did not explain during trial, nor does it explain on remand, why FIPA97’s “interaction-protocols” parameter is analogous to the Machine Type and Language examples in the Specification. See Pet. Reply 78; see generally Pet. Remand Opening Br., Pet. Remand Resp. Br. In addition, Petitioner did not cite, nor does it cite on remand, any declaration generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Petitioner’s argument, therefore, is conclusory and unpersuasive as unsupported attorney argument. See Icon Health & Fitness, Inc. v. Strava Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017) (“Attorney argument is not evidence or explanation in support of a conclusion.”); Invitrogen Corp. v. Clontech Lab., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (“Unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony.”).” slip op. at 32

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2022-00084 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 over Gleichauf, Ovadia, and Lewis because the petitioner did not sufficiently explain why a skilled artisan would have combined Gleichauf and Lewis as …

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Dr. Reddy additionally testifies that “URL redirection is a well-known concept in HTTP traffic” (Ex. 1003 ¶ 24) and that “[a person of ordinary skill in the art] would have been familiar with URL redirection, which was a common technique used to forcibly provide an alternative response to a client’s request for a web page” (id. at ¶ 134). During the oral hearing, Petitioner also stated, citing the Reddy Declaration, that “it was well known to redirect traffic to a separate server.” Tr. 17:8–12 (citing Ex. 1003 ¶ 134). This, however, does not provide a sufficient explanation why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis. This rationale and all of the other reasons for the proposed combination proffered by Petitioner establish, at most, that Gleichauf and Lewis could have been combined to meet limitations [1.8] and [1.9], rather than a person of ordinary skill in the art would have been motivated to make the proposed combination. This is insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“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”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). We find, therefore, that Petitioner does not provide a sufficient reasoning to support obviousness of claim 1 based on the proposed combination.7 See Kinetic Concepts, 688 F.3d at 1366–67 (holding that “some kind of motivation must be shown from some source, so that the [trier of fact] can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented [invention]”)); InTouch Techs., 751 F.3d at 1348–49 (Fed. Cir. 2014) (“[The expert witness’s] testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”).” slip op. at 36

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also 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 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2022-00081 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also 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 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2021-00593 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis as proposed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also 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 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Sep 9, 2022 · IPR2022-00652 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–15 and 17–41 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 9 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . . But regardless of what level of skill is applied, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, or in other proceedings.”). On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill” slip op. at 6

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

    “We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 7

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

    “teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we are not persuaded that Petitioner provides sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Lipsker and Wohrl in the manner recited in the challenged claims.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,511,543
• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Sep 9, 2022 · IPR2022-00548 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 and 17–41 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelOther

    “(“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 9–10 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . . But regardless of what level of skill is applied, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, or in other proceedings.”).” slip op. at 6

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

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 7

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

    “Thus, as we understand it, Petitioner is arguing that a POSITA would have understood Wohrl’s teaching of laying fiber strands on a core and precuring the fibers so that the fibers dry and stick to the core is “coupling a portion of the at least one path to an anchor point” as recited in claims 1 and 38. Petitioner’s argument appears to be premised on the understanding that any point at which the path contacts a “surface suitable for anchoring the part” is the claimed “anchor point.” The ’543 patent, however, describes an “anchor point” as something more than just any point to which a part of the path is affixed.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,511,543

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.