- PTAB · Nov 21, 2024 · IPR2024-00918 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted grounds, finding a reasonable likelihood that claims 1–10 and 12–16 would have been obvious over Leaning.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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(a). Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“when there is an earlier petition challenging the same patent. See General Plastic, Paper 19 at 15–16. To determine whether to deny the subsequent petition, the Board considers the following non-exclusive factors (the “General Plastic factors”): 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Id. at 16.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“when a petition presents “the same or substantially the same prior art or arguments [that] previously were presented to the Office.” 35 U.S.C. § 325(d); see 37 C.F.R. § 42.4(a). To evaluate whether such a denial is appropriate, the Board determines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including: 13 Like the parties, we focus our analysis on Leaning. See Pet. 67–69; Prelim. Resp. 14–22; Prelim. Reply 1–4; Prelim. Sur-reply 1–4. We are persuaded that Petitioner’s Leaning-only ground meets the standard for institution, and we do not reach Petitioner’s alternative ground based on Leaning and Gamble. See supra §§ II.E–F. Moreover, the statutory purpose of Section 325(d) would not be undermined by instituting on both challenges given Gamble’s limited role in Petitioner’s ground (see Pet. 58–60) and during prosecution (see, e.g., Ex. 1002, 208). art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). Factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office), and factors (c), (e), and (f) relate to the second part (i.e., “whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments). Advanced Bionics, Paper 6 at 10. “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. Discussion a. Advanced Bionics Part One We are persuaded that the Petition presents substantially the same art as was previously presented to the Office, such that part one of the Advanced Bionics framework is satisfied. Leaning was not previously presented to the Office, but another reference by the same inventors—U.S. Patent Application Publication No. 2004/0030547 A1 (Ex. 2001, “Leaning US”)—was cited during prosecution. See Pet. 67–68. We agree with Patent Owner (see Prelim. Resp. 14–17) that Leaning is cumulative of the disclosures in Leaning US. See Ex. 2002 (redline of differences between Leaning and Leaning US). Moreover, we find that these similarities pertain directly to Petitioner’s unpatentability analysis in this case. For example, all of Petitioner’s citations to the written description of Leaning for limitation 1[A][3] (see Pet. 20–22) are disclosed in substantially identical language in Leaning US. Compare Ex. 1004, Abstr., 3:1–22, 5:4–6:8, 6:13–7:7, 9:3–7, 12:8–34, 13:23–14:19, 16:6–12, with Ex. 2001 ¶¶ 19–27, 36–43, 45–50, 57, 63–64, 72–80, 90–91. Accordingly, we are persuaded that Leaning is substantially the same as Leaning US, which was previously presented to the Office. b. Advanced Bionics Part Two To determine whether Petitioner has shown material error, we consider Becton, Dickinson factors (c), (e), and (f). Advanced Bionics, Paper 6 at 10. “Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments,” and if that record “is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f).” Id. consideration of Leaning US is nearly silent. Neither the applicants nor the examiner discussed Leaning US, and the examiner did not use it as a basis of any rejection. Rather, Leaning US was only cited on a twenty-five page Information Disclosure Statement (IDS) along with 237 other references. See Ex. 1002, 7–31. Given the volume of the applicants’ disclosure, it would not be surprising if the examiner overlooked material information in it. Because the Office’s evaluation of Leaning US was minimal, we find that factor (c) weighs against exercising discretion to deny institution. As for factors (e) and (f), Petitioner has shown that the Office erred by” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“The legal question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,407,564 - PTAB · Nov 21, 2024 · IPR2024-00917 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR of claims 1–18 on both asserted obviousness grounds, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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(a). Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“when there is an earlier petition challenging the same patent. See General Plastic, Paper 19 at 15–16. To determine whether to deny the subsequent petition, the Board considers the following non-exclusive factors (the “General Plastic factors”): 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Id. at 16.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“when a petition presents “the same or substantially the same prior art or arguments [that] previously were presented to the Office.” 35 U.S.C. § 325(d); see 37 C.F.R. § 42.4(a). To evaluate whether such a denial is appropriate, the Board determines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 14 Like the parties, we focus our analysis on Leaning. See Pet. 59–61; Prelim. Resp. 14–23; Prelim. Reply 1–4; Prelim. Sur-reply 1–4. We are persuaded that Petitioner’s Leaning-only ground meets the standard for institution, and we do not reach Petitioner’s alternative ground based on Leaning and Ala-Honkola. See supra §§ II.E–F. Moreover, the statutory purpose of Section 325(d) would not be undermined by instituting on both challenges given Ala-Honkola’s limited role in Petitioner’s ground (see Pet. 50–52) and during prosecution (see, e.g., Ex. 1002, 81–82). and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). Factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office), and factors (c), (e), and (f) relate to the second part (i.e., “whether the petitioner has demonstrated a material error by the Bionics, Paper 6 at 10. “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. 2. Discussion a. Advanced Bionics Part One We are persuaded that the Petition presents substantially the same art as was previously presented to the Office, such that part one of the Advanced Bionics framework is satisfied. Leaning was not previously presented to the Office, but another reference by the same inventors—U.S. Patent Application Publication No. 2004/0030547 A1 (Ex. 2001, “Leaning US”)—was cited during prosecution of related, ancestor applications. See Pet. 60. We agree with Patent Owner (see Prelim. Resp. 14–15, 17–18) that Leaning is cumulative of the disclosures in Leaning US. See Ex. 2002 (redline of differences between Leaning and Leaning US). Moreover, we find that these similarities pertain directly to Petitioner’s unpatentability analysis in this case. For example, all of Petitioner’s citations to the written description of Leaning for limitation 1[A][3] (see Pet. 20–22) are disclosed in substantially identical language in Leaning US. Compare Ex. 1004, Abstr., 3:1–22, 5:4– 6:8, 6:13–7:7, 9:3–7, 12:8–34, 13:23–14:19, 16:6–12, with Ex. 2001 ¶¶ 19– 27, 36–43, 45–50, 57, 63–64, 72–80, 90–91. Accordingly, we are persuaded” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“On this record, the findings from the ITC Investigation regarding objective indicia do not undermine the sufficiency of Petitioner’s obviousness showing for purposes of institution. Our preliminary record includes no evidence of long-felt need, failure of others, unexpected results, commercial success, or industry praise. In addition, Patent Owner has not yet shown a nexus between any such evidence and the claimed invention. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“In order to accord substantial weight to secondary considerations in an obviousness analysis, the evidence of secondary considerations must have a nexus to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention.”); see also id. (“The patentee bears the burden of showing that a nexus exists.”); ZUP, LLC patentee “bears the burden of production with respect to evidence of secondary considerations of nonobviousness”). Patent Owner will have the opportunity during the trial to present and develop arguments that objective indicia show that the challenged claims would not have been obvious, and our final written decision will be based on the full trial record.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,757,156 - PTAB · Nov 21, 2024 · IPR2024-00857 · APJ Brian J Mcnamara · IPR · Institution
Instituted IPR on claims 1–19, with trial authorized on all petition grounds, based on a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as having “a Bachelor’s Degree in electrical or computer engineering, computer science, or a similar field with two or more years of work experience with low-power connected devices.” Pet. 6 (citing Ex. 1003, Wolfe Decl. ¶ 29). Petitioner further states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes if its Preliminary Response, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim Resp. 7–8. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of a person of ordinary skill appears consistent with the subject matter of the ’216 patent and the references, we apply Petitioner’s standard for purposes of this Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (citations omitted). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 7; Prelim. Resp. 8. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1, 2, 5–8, 11–15, 18, 19 as obvious over Nagata and the knowledge of a person of ordinarily skill in the art; Claims 1, 2, 5–8, 11–15, 18, and 19 as obvious over Nagata in view of Hashiguchi; and or Nagata in view of Hashiguchi and Thubert. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“short intervals of time and communicates at a rapid interval (e.g.,150 msec every 4 sec). Id. at 55 (citing Ex. 1006 ¶¶ 70, 127–128, 138–139; Ex. 1003, Wolfe Decl. ¶ 158). Petitioner further notes that, although both Nagata and Hashiguchi transmit beacon signals synchronized to the awake modes of the labels to indicate the presence of information from an access point at scheduled, repetitive times, Nagata and Hashiguchi operate a little differently. Id. at 56. In particular, Nagata transmits a beacon signal synchronized to the electronic label wake-up time once every 60 seconds and varies the duration of the label’s awake mode (e.g., 30 seconds when the beacon indicates information to be transmitted is present); but Hashiguchi transmits a beacon signal synchronized with the electronic label’s awake time ratio, communicating beacons that correspond to the wake-up frequency, where the label listens for information for 150 msec in either a fast command mode (every 4 seconds or 15 times per minute) or a normal command mode (every 20 seconds or 3 times per minute). Id. at 56–57, 59– 60. Petitioner emphasizes that this feature allows Hashiguchi to improve its responsiveness, while reducing battery power drain, providing a reason for an ordinarily skilled artisan to combine th teachings of the references. Id. at 56–58. Noting that, like Nagata’s beacon signals, Hashiguchi’s beacon signals are sent at synchronized and prescribed time intervals in a manner that is indistinguishable from Nagata, Patent Owner argues that Petitioner fails to cure the defects of Nagata concerning the claimed fast wake-up instruction. Prelim. Resp. 23–24. As discussed above, the claim limitations do not exclude synchronous systems that transmit beacons signals or enter the fast and normal wake-up our analysis of Nagata (see Section IX.B herein), we determine that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Nagata and Hashiguchi and that their combined teachings would have disclosed or suggested all the limitations of the independent claims 1, 7, and 14 and their corresponding dependent claims to such an ordinarily skilled artisan.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,540,216 - PTAB · Nov 21, 2024 · IPR2024-00940 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’234 patent on all grounds of unpatentability presented.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including:” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 5. Notwithstanding, Patent Owner asserts that “resolution of such dispute is not necessary for the Board to make a determination regarding institution.” Id. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, 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). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,991,234 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. We find Petitioner’s proposal 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); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, ordinary skill in the art for purposes of this Decision.” slip op. at 8
- PTAB / AIA Trials › §315(e) estoppelMixed
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26
Patent outcomesUS 10,681,009 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,681,009 - PTAB · Oct 23, 2024 · IPR2024-00679 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 28, 38, 39, 41–43, 53, 56–59, 61–63, and 65–68 on all asserted grounds after finding a reasonable likelihood that claim 28 was obvious over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Based on the present record, we agree with Patent Owner that the recited “reconfiguring the communication port” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfiguring the communication port” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we find Petitioner’s rationale sufficient for institution. Petitioner points to Krantz’s alleged goals of security and automation. Pet. 19. Petitioner (id.) and Dr. Houh (Ex. 1503 ¶ 64) both cite paragraph 19 of Krantz, which states that “[i]f credentials do not authorize full access . . . the server can respond by sending a notification . . . includ[ing] conditions (e.g., signup, renewal etc.) a user must satisfy to become authorized for []full access to resources.” Ex. 1505 ¶ 19. We are persuaded preliminarily that an ordinarily skilled artisan considering Krantz’s teachings of such conditions for full access would have had reason to apply Herrmann’s technique for checking a client’s antivirus security policy in the manner suggested by Petitioner. See, e.g., Ex. 1503 ¶ 64; Ex. 1506 ¶ 68. Krantz’s express teaching of conditions for a client to fully access a network (Ex. 1505 ¶ 19) also undermines Patent Owner’s argument about impermissible hindsight and Patent Owner’s suggestion that Krantz is limited to user authentication. Finally, we are persuaded that Petitioner has shown sufficiently, for purposes of instituting review, that an ordinarily skilled artisan would have expected success in making the combination because it would only require software modifications to Krantz’s system. See, e.g., Ex. 1503 ¶ 64.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00675 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–6, 11–13, 15–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of success at least on obviousness over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Krantz and Herrmann. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 5. Claims 2–6, 11–13, 15–19, and 23–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’484 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 22
- Parallel petitionsDecided for petitioner
“III. PARALLEL PETITIONS As noted above, Petitioner challenges the ’484 patent both in this proceeding and in IPR2024-00679. Petitioner argues that we should institute review in both proceedings because “the analysis of all 33 challenged claims . . . of the 484 Patent could not reasonably fit within the word limit for a single petition.” Paper 4, 2. Petitioner notes further that “addressing different sets of independent claims in each petition was most efficient given the differences between independent claim 1 (Petition 1 - IPR2024-00675) and independent claims 28, 41, 56, and 57 (Petition 2 - IPR2024-00679).” Id. Patent Owner does not argue that we should deny institution either in this proceeding or in IPR2024-00679 due to Petitioner’s having filed parallel petitions challenging the ’484 patent. Prelim. Resp. 1–44. Given Patent Owner’s acquiescence and Petitioner’s arguments, we do not exercise our discretion to deny institution due to the parallel petitions.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the present record, we agree with Patent Owner that the recited “reconfigur[ing] the communication device” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfigur[ing] the communication device” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture. Based on the present record, we need not expressly construe any other claim terms.3 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00676 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–10, 14, 16, 22–23, 25, and 27 on the asserted obviousness ground based on Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“qualifies as prior art to the ’450 patent “because the InfoExpress inventors conceived of the invention [of the ’450 patent] before the effective dates [of Krantz and Herrmann] and exercised reasonably continuous diligence in reducing the claimed inventions to practice.” Prelim. Resp. 33–45. Petitioner disagrees that the present record sufficiently shows that the inventors of the ’450 patent conceived of the invention before the effective date of Krantz or Herrmann and that the inventors exercised reasonably continuous diligence in reducing that invention to practice. See Prelim. Reply 1–7. In particular, Petitioner raises questions with respect to the independence of Patent Owner’s evidence from the inventor testimony that evidence is intended to corroborate, as well as with respect to whether the evidence offered by Patent Owner sufficiently shows conception, reduction to practice, and reasonably continuous diligence. Id. We do not think the information of record is sufficient to antedate Krantz and Herrmann such that we should deny institution of inter partes review on that basis. First, Patent Owner’s arguments rely on the testimony of inventor Stacey C. Lum, who has not yet been subject to cross-examination. See Prelim. Resp. 35–45 (citing Ex. 2003). Second, Petitioner identifies several issues where further development of the record may be helpful. For example, Patent Owner’s asserted date of conception is associated with the date of an engineering specification included in the record as Exhibit 2011. See Prelim. Resp. 35–36 (citing Ex. 2003 ¶ 12; Ex. 2011; Ex. 2012). We agree with Petitioner (see Prelim. Reply 4–5) that it is unclear, based on the present record, whether Exhibit 2011 corroborates the testimony supporting Patent Owner’s conception date given that the present record does not establish the author of Exhibit 2011. See Ex. 2003 ¶ 22 (inventor Stacey C. Lum testifying only that “InfoExpress personnel drafted EX2011”). These and other issues relating to the prior-art status of Krantz and Herrmann are, in our view, best left for trial after full development of the record.3” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,677,450 - Google LLC v. Dialect, LLCInstitutedPTAB · Oct 23, 2024 · IPR2024-00752 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR on claims 1–27 on all asserted grounds, finding a reasonable likelihood of success on at least claim 1 over Coffman and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(iii) Conclusion as to Claim 1 We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable as having been obvious over Coffman.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“synchronizing” of context information and Coffman’s “updating” of context information. See Prelim. Resp. 1–2, 18, 20–23. However, this overlooks that Coffman describes its “updating” of context information as “the exchange of information to coordinate the conversation involving multiple devices,” such as Coffman’s master device and slave devices. Ex. 1003, 22:32–23:15 (emphasis added), 25:10–14, 26:28–27:20. Based on the present record, we are persuaded by Mr. Schmandt’s testimony that this results in synchronization of context information between the devices, such that (for example) the context stack of Coffman’s master device is updated based on the context stack of Coffman’s slave device(s). See Ex. 1002 ¶¶ 70–71. This is consistent, for example, with the ’652 patent’s description of “[t]he synchronization process” as “attempt[ing] to determine which version of a data element or an agent are the newest or most up-to-date and propagates that element,” including replacing “a portion of the database.” Ex. 1001, 17:25–32. slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner appears to be relying on an implicit claim construction that the term “synchronize” requires perfect synchronization, not allowing any deviation between the respective context stacks of the synchronized devices. This implicit claim construction is contradicted by the ’652 patent specification, which contemplates that “[t]he synchronization may be performed automatically when any two or more of the computers are connected to these networks,” or “[a]lternatively . . . the synchronization” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We conclude, per Advanced Bionics, that the Examiner erred in “overlooking specific teachings” of Coffman / Coffman ’574 when allowing the ’652 patent to issue. Advanced Bionics, at 8–9 & n.9; see also id. at 10 (“[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive[.]”). Here, the Examiner cited Coffman ’574 as a considered reference, but did not cite Coffman ’574 as the basis for any claim rejections. See supra Section IV.B.1. Nor did the Examiner express any reasons for allowance over Coffman ’574. See id. Patent Owner’s argument that the Examiner allowed the ’652 patent claims over Coffman ’574 for the same reasons that the Examiner allowed the claims over the unrelated Mumick reference is not supported by the prosecution history evidence. In particular, the Examiner cited Mumick’s synchronization of navigation histories as being different from the claimed synchronization of context stacks/sets. See Ex. 1012, 170–171, 447. Coffman / Coffman ’574, by contrast, specifically discloses context stacks/sets. See supra Section III.E.2(ii) (comparing Coffman with claim 1 of the ’652 patent). Patent Owner does not cite to anything in the prosecution history to establish the Examiner considered the specific teachings of Coffman / Coffman ’574 cited in the Petition as disclosing the synchronization of context stacks/sets recited in claims 1, 14, and 20 of the ’652 patent. Indeed, accepting Patent Owner’s reasoning would prove too much, as it would mean the Examiner concluded all of the twelve initially-cited references (see Ex. 1012, 175) as well as all of the approximately 650 later-cited references (see id. at 450–477) were distinguished from the allowed claims by failing to disclose or suggest synchronizing context stacks/sets, because the same reasons for allowance over Mumick were provided in both instances (see id. at 170–171, 447). Thus, we conclude Petitioner’s case for obviousness over Coffman is not a mere “disagreement with a specific finding of record by the Office” during prosecution of the ’652 patent. Advanced Bionics, at 10–11.” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,849,652 - Google LLC v. Dialect, LLCInstitution deniedPTAB · Oct 15, 2024 · IPR2024-00746 · APJ Brian J Mcnamara · IPR · Institution
Institution was denied for claims 1–9 and 12 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“speech recognition and processing (and more experience could substitute for less formal education, and vice versa).” Pet. 15 (citing Ex. 1002, Schmandt Decl. ¶¶ 11–15). Patent Owner does not explicitly dispute Petitioner’s characterization of a person of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of the level of ordinary skill appears consistent with the technology of the ’209 patent and the references, we apply Petitioner’s characterization of an ordinarily skilled artisan for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party has proposed a special definition or explicit construction of any claim term for purpose of this Decision. See Pet. 17 (“[e]xpress claim construction is unnecessary”); Prelim. Resp. 13 (“the Board need not engage in any pre-institution claim construction”). For purposes of this Decision, we understand Petitioner to propose that the claims be given their ordinary and customary meaning as understood by a person of ordinary skill under Phillips. 37 C.F.R. 42.104(b)(3).” slip op. at 9
- BurdenDecided for patent owner
“processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not demonstrated that the combined teachings of Coffman, Kanevsky, Kneser, and that Petitioner has not shown a reasonable likelihood it would prevail in its challenge to claim 1 based on the combined teachings of these references.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,398,209
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.