- ROKU, Inc. v. Flexiworld Technologies, Inc.Institution deniedPTAB · Mar 14, 2022 · PGR2021-00111 · APJ Bryan F Moore · PGR · Institution
The Board denied institution because the challenged patent was not eligible for post-grant review; it found the priority applications supported claims 6 and 19 and did not reach the § 101 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the above reasons, we are persuaded that the ’031 patent’s priority applications (pre-AIA applications) provide written description support for the claim limitation that “that the “output system” (claim 6) or “output device” (claim 19) can be an “Internet appliance.” Thus, we are not persuaded by Petitioner that claims 6 and 19 have an effective filing date after March 16, 2013. Accordingly, claims 6 and 19 do not render the ’031 patent eligible for post-grant review under AIA § 6(f)(2)(A). Accordingly, the information presented in the Petition does not establish that the ’031 patent is eligible for post-grant review.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Finally, the definition of output device in the priority ’765 Application (as in the Specification of the ’031 patent) is that an “[o]utput device [] is an electronic system capable of outputting digital content … Any device capable of playing or reading digital content in voice (e.g., music, speech) or data (e.g., text, document) is also a possible output device.” Prelim. Resp. 15 (alterations in original) (quoting Ex. 1011 (’765 application) ¶ 89, Ex. 1001, 16:29–41). An Internet appliance does fall within that definition. The ’765 Application also contemplates that an output device is a network device accessible through an IP address. See Ex. 1011, 14 (referring to “[i]dentification of an output device” by “IP address”). Put another way, the priority application adequately describes a device fitting the description of” slip op. at 14
§ 112 disclosurePatents in suitUS 10,846,031 - Apotex Inc. / Apotex Corp. v. Auspex Pharmaceuticals, Inc.Institution deniedPTAB · Mar 9, 2022 · IPR2021-01507 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–3 under § 325(d), finding the petition relied on substantially the same art or arguments previously presented and did not show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments. Id. In general, only if the same, or substantially the same, art or arguments previously were presented to the Office, do we turn to whether Petitioner has established a material error. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 24
Discretionary denialPatents in suitUS 8,524,733 - Coloplast A/S. v. Pamarope Pty Ltd.InstitutedPTAB · Mar 4, 2022 · IPR2021-01437 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–4, 6, 7, 9–14, 16, 17, 19, and 20 are unpatentable under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition and all supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- BurdenInstituted
“deemed to not explicitly teach or render obvious adjusting the tension by moving the second portion through the aperture of the second anchor so that the central portion provides at least a sling-like support for the urethra between the first and second locations,” Benderev teaches such a technique. Pet. 16–17. In support of this assertion, the Petition provides multiple reasons in support of the proposed combination, including a desire a) towards “achieving proper support of the urethra,” b) to “allow a medical practitioner to tacitly determine whether the anchor was properly engaged in the implant location to provide adequate fixation of that anchor,” c) to “allow a medical practitioner to implant the anchors without interference from the attached sutures,” and d) recognition by a POSITA “that applying Bendrev’s tensioning technique would have led to predictable results without significantly altering or hindering the Neisz’s method of providing support for the urethra to treat female urinary incontinence.” Id. at 17–21 (citing Ex. 1003 ¶ 61). Accordingly, on this record, we find Petitioner has sufficiently shown that Neisz in combination with Benderev suggests and expectation of success.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’715 patent would have had a doctor of medicine (M.D.) in an area emphasizing female pelvic surgery, or an equivalent field, 1 Neisz et al., US Patent Application No. 2002/0161382 A1, published October 31, 2002 (Ex. 1004) (“Neisz”). 2 Benderev et al., US Patent No. 6,500,194 B2, issued December 31, 2002 (Ex. 1005) (“Benderev”). 3 Brenneman et al., International Patent Application Publication No. WO 98/19606, published May 14, 1998 (Ex. 1006) (“Brenneman”). 4 Kovac, US Patent No. 6,039,686, published March 21, 2000 (Ex. 1010) (“Kovac”). reconstructive surgery, or an equivalent field or a bachelor of science and/or an advanced degree in an academic area emphasizing biomedical engineering, bioengineering, mechanical engineering, medical device design, or an equivalent field. Pet. 9 (citing Ex. 1003 ¶¶ 41–43). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We also find that Petitioner’s expert Dr. Erickson is qualified to opine on the issues in this proceeding from the perspective of one of ordinary skill in the art. Ex. 1011 (Dr. Erickson’s CV); see Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case . . . a witness must at least have ordinary skill in the art.”).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits constructions for several claim limitations “as being consistent with the plain meaning of the terms.” Pet. 8. Except to the extent we explain how we interpret the claims in the analysis below, we decline to otherwise expressly construe any claim terms at this time. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) 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) (citing Vivid Techs in the context of an inter partes review).” slip op. at 5
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,925,715 - Petitioner v. Dana-Farber Cancer Institute, Inc.Institution deniedPTAB · Mar 2, 2022 · PGR2021-00115 · APJ Cynthia M Hardman · PGR · Institution
The Board denied institution of PGR on all challenged claims because the patent owner disclaimed every claim, and declined to enter adverse judgment.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we must deny institution of the requested post-grant review. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated precedential on Sept. 9, 2019) (denying institution of inter partes review under analogous rule 37 C.F.R. § 42.107(e) based on disclaimer) (“General Electric”).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“construed Rule 42.73(b) to permit the Board to enter adverse judgment when a patent owner cancels all claims prior to institution. Id. However, we do not read Arthrex or Rule 42.73(b) as requiring us to enter adverse judgment in this context. Here, consistent with Rule 42.207(e) and the Board’s precedential General Electric decision, we determine that a denial of institution is sufficient to dispose of this case. See also General Elec. Co. v. United Techs. Corp., IPR2019-01489, Paper 11 at 4–5 (Dec. 10, 2019) (denying institution based on disclaimer and declining authorization to file motion for adverse judgment); Google LLC v. Jenam Tech LLC, PGR2021- 00082, Paper 8 at 2 n.1 (Nov. 17, 2021) (denying institution based on disclaimer and declining petitioner’s request to file additional briefing regarding adverse judgment).” slip op. at 3
NonePatents in suitUS 10,849,980 - Medtronic, Inc. / Medtronic Vascular, Inc. v. Teleflex Life Sceinces LimitedNo claims unpatentablePTAB · Feb 23, 2022 · IPR2020-01344 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 25–55 were not determined unpatentable: the Board found the obviousness showing deficient, found Root was not prior art, and credited objective evidence of nonobviousness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention would have been either: (1) a medical doctor who would have had “(a) a medical degree; (b) completed a coronary intervention training program, and (c) experience working as an interventional cardiologist;” or (2) an engineer who “would have had (a) an undergraduate degree in engineering, such as mechanical or biomedical engineering; and (b) at least three years of experience designing medical devices, including catheters or catheter-deployable devices.” Pet. 11–12. Additionally, Petitioner contends “[e]xtensive experience and technical training might substitute for education, and advanced degrees might substitute for experience.” Id. at 12. Further, according to Petitioner, a person of ordinary skill in the art “with a medical degree” and a person of ordinary skill in the art “with an engineering degree” may have had access to each other. Id. (citing Ex. 1405 ¶ 27; Ex. 1442 ¶¶ 24-25). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 7. We adopt Petitioner’s proposed level of ordinary skill in the art as it is undisputed and consistent with the level of skill reflected in the prior art and the specification of the ‘413 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In view of the issues we address below, we determine it is not necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). C. Scope and Content of the Prior Art” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“catheter or stent . . . . through the side opening.” E.g., Ex. 1401, 14:16–25. The parties do not dispute that Kontos does not teach the claimed “segment defining a side opening” as required by independent claims 25 and 52. Pet. 18; PO Resp. 12. As set forth above, the Petition provides multiple reasons why one of ordinary skill in the art would have wanted to remove the funnel of Kontos and provide a partially cylindrical opening proximal of the tubular structure, as taught by Ressemann. Patent Owner provides several arguments in response as to why the modifications suggested by Petitioner are grounded in hindsight. Upon review of the parties’ arguments and supporting evidence, we agree with Patent Owner that Petitioner fails to establish why a person of ordinary skill in the art would have substantially redesigned Kontos (including removing the funnel portion) to provide the side opening configuration of independent claims 25 and 52 and the “one French size” differential of independent claim 25. We agree with Patent Owner, for the reasons Patent Owner provides as summarized above, that Petitioner’s rationale is insufficient, and adopt Patent Owner analysis, as supported by the cited evidence, as our own. Furthermore, while Petitioner may have established that side openings were known in the art, they appear in devices intended to receive an interventional cardiology device when positioned within a guide catheter. Switching to a side opening in Kontos to beneficially increase the available real estate within the catheter or to reduce the size of the guide catheter would require extensive modifications. Reply 5. To that point, we agree with Patent Owner that Petitioner fails to establish that a person of ordinary skill in the art would have been “motivated to completely redesign Kontos, with at least six additional changes,” including (1) “recess[ing]” Kontos’s marker bands; (2) attaching the distal soft tip in-line rather than with overlapping structure; (3) removing Kontos’s base portion 18; (4) “taper[ing] the pushrod” down to less than 0.005 inches; (5) “attach[ing]” the thin-tapered pushrod to Kontos’s tube wall without base portion 18, and (6) “increase[ing]” the diameter of “tube 16.” Sur-reply 3–6. We further note that the funnel portion of Kontos appears to be crucial to the device’s ability to receive and facilitate exchange of balloon catheters:” slip op. at 36
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia with nexusDecided for patent owner
“products had on the field of interventional cardiology, but contends that prior art devices, including those taught by Itou, Kontos, and Ressemann, “are RX, configured to deliver a wide variety of IVCDs, and provide increased backup support when extended partially past the end of a [guide extension catheter].” Reply 25. The evidence of record persuasively demonstrates, however, that the long-felt need for improved backup support was unresolved in the art prior to introduction of the GuideLiner devices. As noted by Petitioner, Kontos and Ressemann both provide some level of backup support, but there is no persuasive evidence that either of these products resolved the long-felt need in the art for a device that would avoid backout problems when difficult lesions are encountered during a procedure. See Ex. 2151 ¶¶ 8–9. And although mother-and-child devices were known to provide additional backup support, Patent Owner’s declarants persuasively demonstrate that a mother-and-child approach was not a safe or time- and cost-effective solution to the backout problem addressed by the GuideLiner products. PO Resp. 63–64; Ex. 2151 ¶¶ 6–8; Ex. 2145 ¶¶ 69– 75; Ex. 2215 ¶¶ 16–19 (Dr. Thompson testifying that the problems related to the mother-and-child approach led to very limited use of this technique). Indeed, in view of its inherent limitations, the mother-and-child approach was rarely, if ever, used by interventional cardiologists. Ex. 2145 ¶ 75 (Dr. Graham testifying that the mother-and-child approach “had many significant drawbacks” and he was “not aware of any instances in which a mother-andchild system was successfully marketed.”); Ex. 2215 ¶ 16 (“The mother-andchild approach was rarely, if at all, used by interventional cardiologist for a number of reasons.”). In view of the foregoing, we credit the testimony of Drs. Graham, Thompson, and Azzalini and find that the GuideLiner products solved a long-felt but unmet need in the art, allowing physicians to perform previously impossible coronary procedures.” slip op. at 42
Patent outcomesUS RE46,116 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Medtronic, Inc. And Medtronic Vascular, Inc. v. Teleflex Life Sciences LimitedSome claims unpatentablePTAB · Feb 23, 2022 · IPR2020-01343 · APJ James A Tartal · IPR · Final written decision
Claims 52 and 53 are unpatentable as anticipated by Ressemann; the other challenged claims were not shown unpatentable because Itou is not prior art.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Documents are authenticated by evidence “sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a); see Fox Factory v. SRAM, LLC, IPR2016-01876, Paper 59 at 63 (PTAB Apr. 2, 2018) (quoting same). “Authenticity is, therefore, not an especially high hurdle for a party to overcome.” Fox Factory, Paper 59 at 63 (citing United States v. Patterson, 277 F.3d 709, 713 (4th Cir. 2002)). We determine that Exhibit 2024 has been authenticated under the low bar required under Federal Rule of Evidence 901 based on the evidence provided by Petitioner. See Mot. Opp. 2–11. In addition, Petitioner’s arguments go to the weight of the evidence and not its admissibility. Accordingly, we deny Petitioner’s Motion to Exclude. We note, however, that even if we were to exclude Exhibit 2024, it would not change the outcome or our general analysis of this case.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention would have been either: (1) a medical doctor who would have had “(a) a medical degree; (b) completed a coronary intervention cardiologist;” or (2) an engineer who would have had “(a) an undergraduate degree in engineering, such as mechanical or biomedical engineering; and (b) at least three years of experience designing medical devices, including catheters or catheter-deployable devices.” Pet. 13–14. Additionally, Petitioner contends “[e]xtensive experience and technical training might substitute for education, and advanced degrees might substitute for experience.” Id. at 14. Further, according to Petitioner, a person of ordinary skill in the art “with a medical degree” and a person of ordinary skill in the art “with an engineering degree” may have had access to each other. Id. (citing Ex. 1005 ¶ 31; Ex. 1042 ¶¶ 18–19). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 5. We adopt Petitioner’s proposed level of ordinary skill in the art as it is undisputed and consistent with the level of skill reflected in the prior art and the specification of the ’116 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“Petitioner proposes the following constructions: (1) “substantially rigid” as “rigid enough to allow the device to be advanced within the guide catheter,” (2) “side opening” needs no construction and should be given its plain and ordinary meaning, (3) “lumen” as “the cavity of a tube,” and (4) “flexural modulus” as “[a] measure of resistance . . . to bending.” 7 Patent Owner argues that Dr. Hillstead does not meet the definition of a person of ordinary skill in the art because he lacks a four-year undergraduate degree in engineering. PO Resp. 5 n.1 (citing, e.g., Ex. 2137, 462:8–13). As noted above, however, it is undisputed that “[e]xtensive experience and technical training might substitute for education.” Pet. 14. Patent Owner does not address Dr. Hillstead’s significant professional experience, which we find sufficient to show he is qualified to opine on the issues in this proceeding from the perspective of a person of ordinary skill in the art. See Ex. 1043 (curriculum vitae of Dr. Hillstead). does not dispute at this stage of the proceeding Petitioner’s proposed construction of these terms. See generally PO Resp. In view of the issues we address below, we determine it is not necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ressemann. Pet. 23–31. Petitioner provides a detailed explanation of how it contends Ressemann discloses each of the limitations of claims 52 and 53. Id. In particular, Petitioner explains how Ressemann’s disclosures of the use of features including guide catheter 160, evacuation sheath assembly 100, intermediate shaft portion 120, distal shaft portion 130, lumen 140, and stent delivery system 194 correspond to the recited methods of claims 52 and 53. Id. Petitioner’s contentions are supported by Dr. Brecker and Dr. Hillstead. Ex. 1005 ¶¶ 164–174; Ex. 1042 ¶¶ 36–39, 58–62. Patent Owner does not dispute that claims 52 and 53 are anticipated by Ressemann. See generally PO Resp; PO Sur-reply; see also Pet. Reply 2 (Petitioner arguing that Patent Owner did not dispute that Ressemann anticipates claims 52 and 53). After reviewing the record, we find Petitioner shows by a preponderance of the evidence that Ressemann discloses each limitations (Pet. 23–31) as our own findings. Accordingly, Petitioner shows by a preponderance of the evidence that Ressemann anticipates claims 52 and 53 of the ’116 patent.” slip op. at 26
Patent outcomesUS RE46,116 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Obviousness Analysis A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, primarily: (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) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,931,797 - PTAB · Feb 16, 2022 · IPR2021-01150 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–18 under § 103 over Paxton, Sutton, and Ivershen, finding a reasonable likelihood of success on at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We concur with Petitioner’s assertions regarding the status of the underlying, related litigation. With respect to Fintiv factor (1), we determine this factor to be neutral. Although the parties stipulated to a trial date, the district court has yet to enter that schedule or hold a scheduling conference. The district court has continued the scheduling conference until after it decides the pending motion to stay. See Ex. 1031, Ex. 1032, 4:11–22. On this record, we are not persuaded that the district court will adhere to the previously agreed upon August 2022 trial date. Even with the arguments and evidence presented, we determine it to be speculative as to whether a stay may be granted if a proceeding is instituted. We reach the same conclusion with respect to Fintiv factor (2), given the speculative nature of the “trial date.” With respect to Fintiv factor (3), we determine that this weighs against discretionary denial; although some discovery has occurred, the parties have not invested significant resources in the district court proceeding.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Ivershen was submitted and discussed during the prosecution of the ’903 patent and in IPR2018-01654 and IPR2018-01655, Ivershen qualifies as art that was “previously presented” to the Office. Thus, we find that Ivershen, the same prior art asserted in the Petition, previously was presented to the Office. Nevertheless, Petitioner asserts that the other prior art references in” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Noting that relevant experience and education can substitute for each other, Petitioner states that a person of ordinary skill in the relevant art, at the time the ’903 patent was filed, had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 13 (citing Ex. 1003 [Declaration of Dr. Robert Akl] ¶¶ 18–20). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “no terms require construction.” Pet. 13. Patent Owner asserts “no express construction of any term is required to resolve any controversy in this proceeding.” Prelim. Resp. 12. After review of the current record, we conclude that no express claim construction is necessary to determine whether to institute review of the challenged claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,530,903 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Feb 16, 2022 · IPR2021-01151 · APJ Stacey G White · IPR · Institution
The Board denied institution for claims 1–24 because the petition did not show a reasonable likelihood that the challenged claims were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“respect to this limitation for several reasons including that Petitioner’s “alleged rule generation and provisioning is responsive to detecting malicious activity, not ‘responsive to the correlating.’” Prelim. Resp. 27–28. On this record, we agree with Patent Owner. The claims require that “responsive to the correlating of . . . packets transmitted by the network device with . . . packets received by the network device: generating . . . based on the correlating, one or more rules.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” and “responsive to” the correlation of packets.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“respect to this limitation for several reasons including that Petitioner’s “alleged rule generation and provisioning is responsive to detecting malicious activity, not ‘responsive to the correlating.’” Prelim. Resp. 27–28. On this record, we agree with Patent Owner. The claims require that “responsive to the correlating of . . . packets transmitted by the network device with . . . packets received by the network device: generating . . . based on the correlating, one or more rules.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” and “responsive to” the correlation of packets.” slip op. at 24
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,659,573 - Unified Patents, LLC v. Justservice.Net LLCSome claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01258 · APJ Christopher G Paulraj · IPR · Final written decision
Claims 1–6, 8, 10, 13–16, 19, and 20 are unpatentable as obvious; claims 11, 12, 17, and 18 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“We declined to decide whether Dropbox should have been named an RPI in the Petition in the Institution Decision. Inst. Dec. 2–4. Patent Owner did not raise the RPI issue in its post-institution Response. We agree with Petitioner that Patent Owner has thus forfeited any RPI arguments. Reply at 24 (citing Unified Patents, LLC v. Mobility Workx, LLC, IPR2018- 00150, Paper 26 at 3 (PTAB Dec. 2, 2019) (RPI arguments waived if not in Response)). Therefore, we need not address this issue further.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we adopted Patent Owner’s definition as being consistent with the level of skill in the art reflected by the prior art. Dec. 10–11; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State 6 Patent Owner also submitted a supplemental declaration by Dr. Brogioli (Ex. 2031) with its Sur-Reply. We expunged that document from the record along with certain other exhibits (Exs. 2023–2030) as untimely presented under 37 C.F.R § 42.23(b). Paper 37. Therefore, we do not take those documents into consideration for our analysis in this Decision. Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We continue to apply that same definition for our analysis in this Final Written Decision. We note, however, that there does not appear to be a significant difference between the parties’ respective definitions, so our analysis would not substantially differ under Petitioner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Additionally, we are not persuaded by Patent Owner’s argument that Walker is not enabled, or that a POSITA would not have a reasonable expectation of success in combining Prust with Walker, because those arguments focus on features not required by the challenged claims of the ’868 patent. See Raytheon Tech. Corp. v. General Electric Co., 993 F.3d 1374) (Fed. Cir. 2021) (“In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry.”). Dr. Brogioli acknowledged that he never even analyzed whether the features of Walker that he argues are not enabling are required in the claims of the ’868 patent. Ex. 1032, 84:1-85:22 (testifying that he did not recall performing an analysis about whether the claims of the ’868 patent required allowing users to edit different parts of the same file at the same time, user collaboration, concurrency among user actions and editing, or locking a document). Moreover, other than pointing to the allegedly deficient teachings of Walker itself, Dr. Brogioli cites to no evidence of record in support of his testimony that a POSITA would not have a reasonable expectation of success in implementing Walker. See Ex. 2022 ¶¶ 66–74. But Walker itself is presumed to be enabling for what it teaches. See In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“[A] prior art printed publication . . . is presumptively enabling barring any showing to the contrary by [the] patentee.”). Rather than the unsupported testimony of Dr. Brogioli, we credit the testimony of Dr. Long, which is corroborated by other prior art, that the concepts disclosed in Walker, such as indicating that downloaded files are currently locked and unavailable to other users and multi-user editing, would have been familiar to programming students before 2005, and a POSITA would have been able to apply these well-known techniques with a reasonable expectation of success. Ex. 1008 ¶¶ 36–40, 67 (citing Ex. 1011–1017); Ex. 1033 ¶¶ 4–5.” slip op. at 39
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“we are not persuaded by Patent Owner’s claim construction position that the claims require the virtual server to transmit information about files locally stored on the client device (in addition to virtual server files) as part of the fourth claim element. With regard to the claim language, we agree with Patent Owner that “the one or more files associated with the particular user storage account” recited in the fifth claim element finds antecedent basis in the prior recitation of “information relating to one or more files associated with the particular user storage account” in the fourth claim element. By its plain language, what this means is that at least some of the “information” that is transmitted from the virtual server under the fourth element must be related to the “userselected file” that is subsequently uploaded from the client device under the fifth element. Cf. Yamaha Corp. v. ESS Tech., Inc., 82 F.3d 435, 1996 WL 146499, *3 (Fed. Cir. 1996) (“By using a definite article ‘the’ to describe ‘output’ in the last phrase, Yamaha raises the inference that the term refers to the same value as in the first step.”). Thus, contrary to Petitioner’s arguments, we are not of the view that files referenced in the fourth and fifth elements are completely “distinct.” But this does not necessarily imply, as Patent Owner suggests, that the virtual server must already be in possession of information relating to locally stored files at the point of the transmitting step of the fourth element and prior to the uploading step of the fifth element. Indeed, there is nothing recited in the claims to suggest how the virtual server would come to know about files stored on the client device.” slip op. at 16
Patent outcomesUS 10,476,868 mixedClaim construction§ 103 obviousnessPatents in suitUS 10,476,868
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.