- PTAB · Nov 28, 2023 · IPR2023-01011 · APJ Aaron W Moore · IPR · Institution
Review was instituted on claims 1–4, 7, 8, 10–13, and 16–19, and AO Kaspersky Lab was joined to IPR2023-00126 because joinder was appropriate.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“response, determines warrants the institution of an inter partes review under section 314. A motion for joinder should (1) set forth reasons why joinder is” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted, the Petition asserts the same unpatentability grounds upon which we instituted review in the ’00126 IPR, relying on the same evidence. See Motion 1. If joinder is granted, Petitioner agrees to assume an “understudy” role and states that “[u]nless and until the current petitioners in IPR2023-00126 cease to participate,” Petitioner “will not assume an active role.” See id. at 7–9. Petitioner also explains that “[n]o additional grounds or arguments are being introduced, no new evidence or issues are being added, and no additional discovery or briefing or oral argument should be necessary as a result of [Petitioner]’s joinder.” Id. at 9. Petitioner further “agrees to adhere to all applicable deadlines set forth in the [’00126 IPR] Scheduling Order.” Id. at 7. Because Patent Owner has not opposed the Motion, and because we agree with Petitioner that joinder with the ’00126 IPR is appropriate under these circumstances, we grant the Motion.” slip op. at 4
NonePatents in suitUS 10,257,224 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - PTAB · Oct 11, 2023 · IPR2023-00699 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–30 on all asserted grounds, finding a reasonable likelihood that Sophos would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Fintiv at 12. Petitioner stipulates that, “if the Board institutes the present petition, Petitioner[] will not assert that the challenged claims are invalid on the instituted grounds in the related litigation, nor any other possible prior art printed publication grounds based on the references in Grounds 1 and 2.” Pet. 68. This is broader than a Sand Revolution stipulation but somewhat less restrictive than a Sotera stipulation. See Sand Revolution II, LLC v. Continental Intermodal Group- Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13–14 (PTAB Dec. 1, 2020) (precedential). While not rising to the level of a stipulation that the Interim Procedure indicates would preclude discretionary denial, Petitioner’s stipulation does mitigate concerns about overlapping issues with the related litigation. See Interim Procedure 7–8. We find this factor weighs against exercising discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’250 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner defines the level of skill as follows: A person of ordinary skill in the art at the time of the invention . . . would have had a Bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science or in a similar discipline, and would have had 2-3 years of practical work or research experience in the general fields of electrical engineering, computer science, networking, communications, and device and network security. . . . More advanced degrees or training in a related discipline or both can compensate for shorter work experience. Prelim. Resp. 29 (citing Ex. 2001 ¶¶ 50–54). Patent Owner does not explain at this stage why its proffered level of skill differs from Petitioner’s. We note that both definitions are largely similar. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’250 patent and prior art of record. We thus adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition of the level of skill.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. See Pet. 9–10; Prelim. Resp. 28–29. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,418,250 - PTAB · Oct 11, 2023 · IPR2023-00830 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds and granted T-Mobile’s motion to join the CommScope IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenged claims and all asserted grounds of unpatentability. CommScope IPR, Paper 18 (institution decision); see also CommScope IPR, Paper 1 (the “CommScope petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the CommScope IPR. Compare Pet. 3, with CommScope petition, 4; see also Mot. 1 (asserting that “[t]his Petition and supporting declaration are substantively identical to the petition and declaration submitted in the CommScope IPR”; “Petitioner here asserts that the same claims are obvious over the same prior art based on the same arguments presented by the same expert as in the CommScope IPR”). As indicated, Petitioner also relies on the same declarant as in the CommScope IPR. Mot. 1; compare Ex. 1003 (Declaration of Anthony Acampora, Ph.D.) with CommScope IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the CommScope IPR and for the same reasons stated in our Decision to Institute in the CommScope IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See CommScope IPR, Paper 18, 19–41 (analyzing challenges in the CommScope petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the CommScope petition, contains the same grounds based on the same evidence, and relies on the same declaration of Anthony Acampora, Ph.D. (Ex. 1003). Mot. 1, 4–5. Petitioner represents that joinder will not impact the CommScope IPR schedule. Id. at 5. Petitioner also represents that it “agrees to take an ‘understudy’ role in the joined proceeding, so long as CommScope remains an active party.” Id.” slip op. at 8
NonePatents in suitUS 10,334,499 - Crowdstrike, Inc. v. Open Text Inc.InstitutedPTAB · Sep 12, 2023 · IPR2023-00556 · APJ Garth D Baer · IPR · Institution
Instituted IPR of claims 1–30 on all grounds: the Board found a reasonable likelihood that claims 1–13, 15–27, 29, and 30 were obvious over Kester and Kennedy, and claims 14 and 28 over Kester, Kennedy, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“circumstances, we treat this factor as weighing slightly in favor of denying institution.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Patent Owner has not demonstrated that this case satisfies the first part of the Advanced Bionics framework. It is undisputed that Petitioner’s combination of references was not of record during the ’389 patent’s prosecution because two of the three references are new and Patent Owner does not assert those new references are cumulative to any that were already before the Office. See Prelim. Resp. 31–33. Thus, the same art was not previously before the Office. Nor has Patent Owner shown that the same or substantially the same arguments were previously presented to the office. Even if Patent Owner is correct that the examiner did not identify Kester as disclosing any particular limitation of the independent claims, it does follow that the examiner actually considered that issue. To the contrary, because the examiner concluded that other references taught the independent claims’ elements, there was no need to consider whether Kester did as well. See Ex. 1002, 158–59. In these circumstances, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes an express construction for any claim terms. Pet. 6; Prelim. Resp. 28–29. We agree that no claim terms require express construction to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,726,389 - PTAB · Aug 14, 2023 · IPR2023-00818 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–19 on all petitioned grounds and granted AT&T’s motion to join the Ericsson IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1012). Mot. 1, 4–5. Petitioner represents that joinder will not impact the Ericsson IPR schedule. Id. at 5 (listing reasons as to why “joinder will not impact any schedule that may issue or otherwise prejudice the Patent Owner.”). Petitioner also represents that it “will maintain only an ‘understudy’ role in the proceeding, if joined.” Id. at 6.” slip op. at 8
NonePatents in suitUS 10,334,499 - PTAB · Aug 7, 2023 · IPR2023-00446 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that Sourcefire and Emerging Threats render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’343 Patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’343 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We agree with Petitioner’s arguments. The fact that the disclosures of cited references are the same or similar is unremarkable in that they are applied against the same claims. Additionally, Patent Owner has not presented evidence that the instant Petitioner applied the prior petition, and its non-institution, as a roadmap to try and correct errors of the prior petition. As such, we agree with Petitioner that factor (1) weighs strongly against discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“After reviewing the evidence, we do not agree with Patent Owner’s assessment that Emerging Threats is cumulative to Stolfo, which the Examiner considered during prosecution. Patent Owner previously distinguished its claims from Stolfo by arguing, in part, that “Stolfo describes that network statistics may be used to ‘modify the decoy traffic such that it appears statistically similar to normal traffic,’” and that “Stolfo describes generating decoy traffic and not applying a transformation to existing network traffic.” Ex. 1002, 87 (quoting Ex. 2001 ¶ 124). Patent Owner also argued that “the decoy traffic used in Stolfo does not prevent an exfiltration operation[, but instead,] Stolfo explains that ‘[t]hese traps use decoy information . . . to attract, deceive, and/or confuse attackers (e.g., inside attackers, external attackers, etc.) and/or malware.’” Id. (quoting Ex. 2001 ¶ 124). In contrast, as Petitioner asserts, Emerging Threats discloses its rules to be Snort rules for preventing exfiltration. Pet. 37–43. Petitioner’s explanations of the different rules disclosed in Emerging Threats illustrate their use in preventing exfiltration, and not merely applying processes to decoy traffic. Id. Petitioner also discusses the correspondences between specific rules provided in Emerging Threats and operators disclosed in the ’343 Patent. Id. As such, we are not persuaded by Patent Owner that Emerging Threats is merely cumulative to Stolfo. Therefore, we are not persuaded that Petitioner’s combination of Sourcefire and Emerging Threats is cumulative to the art previously considered by the Examiner in the prosecution of the application that issued as the ’343 Patent, or that the proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. In conjunction with Patent Owner’s contention that Petitioner has not shown that the Office erred, we conclude that, given the circumstances presented here, Patent Owner has not demonstrated that Petitioner’s proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. As a result, we need not further consider whether Petitioner has shown error on the part of the Office. Accordingly, although we have considered Patent Owner’s request for our exercise of discretion to deny institution under 35 U.S.C. § 325(d), on the record before us, we conclude that denial of institution on that basis is not warranted. We proceed to consider the merits of Petitioner’s proposed grounds of unpatentability below.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the evidence of the public accessibility of Emerging Threats in the relevant timeframe, we determine that Petitioner has established that Emerging Threats qualifies as a printed publication under § 102(b) for purposes of institution. The presence of the Internet Archive’s Wayback Machine copy suggests that the document was available and was accessible on December 2, 2010, prior to the March 12, 2013 effective filing date of the ’343 Patent. We have concerns that Dr. Staniford is only able to vaguely assert that the rules provided in the text document appear to be true copies of the rules that existed in 2010. See Ex. 1003 ¶ 204. Given the nature of inter partes review, however, we can be concerned only with the publication itself; we cannot rely on or inquire into how some system performed or was used in the relevant timeframe. Nonetheless, we are persuaded by Dr. Staniford’s unrebutted testimony that Snort was begun as an open source project in the late 1990s, that the Bleeding Snort project launched in 2004 as an independent clearing house for Snort rules, and that the project continues as Emerging Threats. See Ex. 1003 ¶¶ 202–203. This testimony is sufficient, for purposes of institution, to show that one of ordinary skill in the art, at and prior to the effective filing date of the ’343 Patent, would have known to look to the Emerging Threats website for Snort rules that could be applied to conventional cyber defense systems. We determine this to be a reasonable showing, at this stage of the proceeding, that Emerging Threats was sufficiently publicly accessible to be a printed publication. With respect to Patent Owner’s arguments regarding searchability of the Emerging Threats website, given its notoriety, we are unpersuaded that persons of ordinary skill in the art proceeding to the website would not have been able to search its contents and find the rules logged thereon that would have been applicable to the users’ network security concerns. Even based on Patent Owner’s presentation of the website (Prelim. Resp. 40 (citing Ex. 1030, 11; Ex. 1054)), we are persuaded that it would only have required the exercise of reasonable diligence to find the rules list, given the knowledge that one of ordinary skill would have had regarding Emerging Threats. Petitioner asserts that specific rules can be located within Emerging Threats by searching for their unique SID (Pet. 38 n.9), but persons proceeding to the website without knowledge of a specific SID would have found this to be of little help. Nonetheless, the number of locations that the rules may be located on the Emerging Threats website is still limited and users would have been able to utilize the “Last Modified” indicator, showing which directories had been modified recently, to narrow down any search, assuming that items that had not been modified for some time would be less worthy of search. As such, we are not persuaded that persons of ordinary skill in the art, proceeding to the Emerging Threats website, would not have been able to have searched its contents and find the rules contained thereon.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,567,343 - PTAB · Jul 24, 2023 · IPR2023-00445 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–27, finding a reasonable likelihood that Law renders at least one challenged claim unpatentable; it instituted all petition grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We agree with Petitioner’s arguments. The fact that the disclosures of cited references are the same or similar is unremarkable in that they are applied against the same claims. Additionally, Patent Owner has not presented evidence that the instant Petitioner applied the prior petition, and its non-institution, as a roadmap to try and correct errors of the prior petition. As such, we agree with Petitioner that factor (1) weighs strongly against discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’266 Patent. Accordingly, we institute an inter partes review of claims 1–27 of the ’266 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We do not agree with Patent Owner’s arguments. Under Petitioner’s discussion of Law, Internet 155 is the other network and LANs 150a and 150b constitute a single network through network access device 149c. If we take the LANs as a single network, then intrusions prevented by either firewall would protect the overall network collectively. As discussed below, we are persuaded, by Petitioner, that one of ordinary skill in the art would have regarded the paired LANs of Law as viewable as a single network, when compared to the Internet, and each firewall would provide protections to the single network. Patent Owner also argues that Law does not teach or suggest that network access device 149c joins LANs 150a and 150b into a single network because these networks still need to communicate with each other over yet another network, such as the Internet. Prelim. Resp. 33–35. Patent Owner also argues that a device that controls network access between two sub-systems or a sub-system and the Internet does not transform two separate networks into one. Id. at 34–35. We do not agree with Patent Owner’s arguments. As Petitioner points out, Law refers to “network 150,” rather than separately specifying subnetworks 150a and 150b. Pet. 21 (citing Ex. 1005 ¶ 55). We also agree with Petitioner that all network traffic between joined LANs 150a and 150b and the Internet must pass through either firewall 146a or 146b, and that Law’s disclosure of an alternative “bypass” embodiments confirms that ordinarily skilled artisans would have viewed firewalls 146a and 146b as providing the entire interface across the boundary of the network. Id. (citing Ex. 1003 ¶¶ 64–65). We have considered Petitioner’s evidence and arguments with respect to limitation [1.0], including the relevant testimony of Dr. Jacobson, and Patent Owner’s traversing arguments, and find Petitioner’s evidence and arguments to be sufficient to show that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that Law teaches or suggests this limitation.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner also asserts that the preambles of independent claims 1, 8, and 15 are limiting, and asserts that the preambles are “essential to understand the ‘all traffic traversing the boundary’ limitation in the body of the claims.” Prelim. Resp. 23. We discuss the understanding of those limitation in our analysis below, determining the preambles to be limiting in the context discussed.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,785,266 - PTAB · Jul 24, 2023 · IPR2023-00448 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–33 on all petitioned grounds, finding a reasonable likelihood that Keysight would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). When considering whether the combined disclosures in Law and Golnabi teach the invention covered by claim 1, however, we discuss a claim-construction issue, i.e., whether separately listed claim elements are distinct components of the claimed invention. See infra § III.D.3(f)(iii).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“ordinarily skilled artisan would have had a reason to combine Golnabi’s teachings with Law’s teachings in the way Petitioner proposes. See Pet. 18–19, 38; Ex. 1003 ¶¶ 53–57, 80. Specifically, Golnabi teaches techniques for analyzing and modifying firewall policy rules to “optimize the firewall policy and efficiency.” Ex. 1009, 305–06, 308–14; see Ex. 1003 ¶¶ 53–54. As an example, Golnabi discloses combining rules having similar characteristics using “an aggregation algorithm to generate a minimum number of firewall policy rules for efficiency,” e.g., “aggregated by combining the common fields” in multiple rules. Ex. 1009, 308; see Ex. 1003 ¶ 80. For instance, if multiple rules have “matching fields with an exception of source port field,” the “rules are then aggregated” by “combining all the source ports as a range of these source ports to get one generalized rule.” Ex. 1009, 308; see Ex. 1003 ¶ 53. Similarly, “the IP addresses of 129.110.10.7 and 129.110.10.1 can be aggregated to 129.110.10.*” where the * character represents a specified range. Ex. 1009, 308–09; see Prelim. Resp. 22 (quoting Ex. 1009, 308–09).” slip op. at 53
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,012,474
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.