- Lyft, Inc. v. Rideshare Displays, Inc.InstitutedPTAB · Apr 11, 2022 · IPR2021-01599 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, and 6–8 on all asserted grounds, finding a reasonable likelihood of success on the Kalanick/Kemler obviousness and Lalancette anticipation challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discovery.” Pet. 17. We agree with Petitioner that although some time has been invested in the case by the parties and the district court on preliminary matters, the fact discovery, expert discovery, and dispositive motion deadlines have not yet passed, not to mention the deadlines for pre-trial submissions and trial. See Ex. 2005, 3–11 (Scheduling Order). Moreover, we do not give weight to the work done on the issue of patent eligibility under Section 101, as that issue cannot be raised in this inter partes review and therefore does not result in any duplication of work done by the district court.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“At the outset, we note that Kemler was not cited during prosecution of the ’987 patent application. See Pet. 20. Thus, for two of the three grounds in the Petition, namely, those relying on Kemler in combination with Kalanick or Kemler, the combination of references before us in this proceeding was not before the examiner. Petitioner points out that neither Kalanick nor Lalancette was used, either alone or in combination with other references, as a basis for a rejection during prosecution. Pet. 21. In fact, neither reference was discussed by the patent owner or the examiner during the prosecution, nor did the examiner make any prior art rejections before allowing the application to issue. Thus, we agree with Petitioner that Becton, Dickinson factor (c), which considers the extent to which the asserted art was evaluated during examination, points us in the direction of declining to exercise our discretion to deny institution. See Pet. 21. As we will discuss in more detail infra, the Petition analyzes the challenged claims of the ’987 patent in light of the teachings of Kalanick and Lalancette, as well as Kemler, and demonstrates that Kalanick and Lalancette disclose aspects of the claims relied on by the examiner in his reasons for allowance. See Sections IV.F (Kalanick), IV.G (Lalancette).4 This analysis further demonstrates error on the part of the examiner in overlooking teachings of those references material to patentability of the challenged claims. Thus, Becton, Dickinson factor (e), which asks whether petitioner has demonstrated material error on the part of the examiner, weighs against exercising our discretion to deny institution.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, we determine that for the reasons given Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claim 1.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At this stage, we adopt Petitioner’s more general formulation, with the following qualification. We would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Our review of the ’987 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. However, at this stage, the arguments presented by the parties do not depend on the definition of the person or ordinary skill, and therefore, our decision would be the same under either formulation.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,169,987 - Netnut Ltd. v. Bright Data Ltd.InstitutedPTAB · Mar 21, 2022 · IPR2021-01492 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 2, 12, 14, 15, 17–19, and 21–29 because Petitioner showed a reasonable likelihood of prevailing on at least one claim across the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“partes review in this proceeding, at this stage we agree with Petitioner’s claim constructions, specifically, that “the devices in question may be configured to operate in different roles and are characterized by the function they perform (i.e., sending or receiving), not by any physical properties.” Pet. 4–5. More specifically, we adopt the district court’s construction, with the clarification that the second server is “a device that is operating in the role of a server and that is not the first client device.” See infra, Section IV.C. This construction is consistent with the extrinsic evidence offered by Petitioner (Ex. 1018, 5), as well as the construction of “server” adopted by the Board in IPR2021-00458, involving a patent similar to the ’319 patent. See IPR2021-00458, Paper 11, 21. As this claim construction is central to this controversy and favors Petitioner, we determine that the merits of the Petition are strong. Thus, this factor strongly favors not exercising our discretion to deny institution. Conclusion In summary, after weighing the factors and taking a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review, we are not persuaded to exercise our discretion to deny review. The strong showing on the merits in the Petition and relatively minor investment in the merits of the validity challenge in district court persuade us that efficiency and integrity of the system would not be served by denying review.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We have reviewed Petitioner’s arguments and Patent Owner’s brief response. Prelim. Resp. 41–43. For the most part, Patent Owner relies on its Fintiv analysis, discussed supra. For example, for the first factor (“whether the same petitioner previously filed a petition directed to the same claims of the same patent”), Petitioner contends that “Petitioner was not involved with the prior IPR challenging the [’319] Patent.” Pet. 12. Patent Owner responds that “[a]lthough NetNut was not involved in the Code200/Teso IPR proceedings, Patent Owner respectfully disagrees that this factor ‘strongly favors institution’ in view of the detailed Fintiv analysis above.” Prelim. Resp. 42. Similarly, for General Plastic factors 2–6, Patent Owner refers to its Fintiv analysis. Id. at 42–43. For factor 7, Patent Owner responds that “Patent Owner is not presently aware of any risk that the Board will be unable to meet the one-year deadline under 35 U.S.C. § 316(a)(1).” Id. at 43. After considering the Petition and Patent Owner’s response, for the reasons discussed in connection with Fintiv, supra, and for the reasons given by Petitioner, we are not persuaded to exercise our discretion to deny the Petition under General Plastic.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 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 ’319 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 20 (citing Teruya Decl. ¶¶ 25–27). Petitioner continues that “[s]uch a person would be familiar with the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 47. But Patent Owner acknowledges that this definition and Petitioner’s definition of a person of ordinary skill in the art “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. (footnote omitted). We regard Petitioner’s more specific definition as consistent with the ’319 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. We agree, however, that this definition and Patent Owner’s definition of a person of ordinary skill in the art “are not materially different,” and that our decision would be the same using either definition. slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,257,319 - Netnut Ltd. v. Bright Data Ltd.InstitutedPTAB · Mar 21, 2022 · IPR2021-01493 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1, 2, 6–11, 13, and 15–24 on all grounds, finding a reasonable likelihood that NetNut would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“approximately six months prior to the date of the final written decision issuing in this case. We note, however, that a trial date for this Patent Owner slipped by six months in a case in the Eastern District of Texas (see Ex. 1101, docket entries 65, 509), and, further, that Patent Owner sought extensions in a related court proceeding (Ex. 1102). The presently-scheduled trial date is six months off. Factoring in the potential for changed circumstances, we determine that this factor weighs only slightly in favor of exercising our discretion to deny institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”), the Board set out a list of seven factors to consider when asked to exercise its discretion to deny review of follow-on petitions. Here, Patent Owner states that it relies on Fintiv, which it believes is dispositive, and does not rely on General Plastic. Prelim. Resp. 40, n.28. Nevertheless, Patent Owner addresses certain of the General Plastic factors. For factor 1, Patent Owner asserts that as to Code200 and Teso, who were prior petitioners in IPR2021-01358, Patent Owner “is not presently aware of a significant relationship between NetNut and either Code200 or Teso.” Id. at 40. But Patent Owner disagrees that this factor strongly favors institution. Id. at 40– 41. For General Plastic factors 2–5, Patent Owner relies on the arguments presented for factor 3 of Fintiv, and for General Plastic factor 6, Patent Owner relies on its arguments presented for Fintiv factor 6. Id. at 41. On this record, we determine that, based on the facts of this case, the General Plastic factors weighing against exercising discretion outweigh the facts that favor exercising discretion. For General Plastic factors 2–6, we do not find Patent Owner’s arguments persuasive for the reasons discussed above for Fintiv factors 3 and 6. Additionally, Petitioner was not a petitioner in previous proceedings, nor is there any evidence in the record that Petitioner has a significant relationship with petitioners in an earlier case, as acknowledged by Patent Owner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019–00062, Paper 11 at 9–10 (PTAB April 2, 2019) (precedential) (existence of a “significant relationship” between the different petitioners would weigh in favor of discretionary denial); Prelim. Resp. 40. Accordingly, factor 1 of General Plastic also weighs against the exercise of discretionary denial. Thus, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this juncture, we determine that Petitioner has provided sufficient evidence that Crowds discloses the preamble of claim 1 and limitations 1[a]– 1[d].9” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 46 (citing Ex. 2006 ¶ 19). But Patent Owner acknowledges that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’510 patent and the prior art before us.7 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that, at this juncture, we agree with Patent Owner that the proposed qualifications are not materially different and our assessment of the merits of the Petition, as discussed below, would remain the same under either parties’ proposed qualifications.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,484,510 - PTAB · Feb 4, 2022 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Institution
The Board instituted review of claims 1, 10, 12, 13, and 15 on all petition grounds, finding a reasonable likelihood they are obvious over Ogasawara and Bolle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Case. Pet. 61–62; Prelim. Resp. 28; see Ex. 1043, 2–3 (“Consistent with this Court’s rulings on motions to stay pending IPR proceedings in other cases, Defendants will wait to file a motion to stay the District Court proceedings after the PTAB has issued institution decisions on all pending IPR petitions, should those decisions warrant a motion to stay.”). We do not speculate about the likelihood of a stay, and find this factor does not weigh for or against exercising discretion to deny inter partes review in this case.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Ogasawara and Bolle with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that independent claim 1 is unpatentable as obvious over the combination of Ogasawara and Bolle.” slip op. at 39
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“The district court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). In adopting this construction, the district court “agree[d] with Defendants [Petitioner] that the claimed invention requires making a ‘match’ ‘based on comparing parameters’ in order to ‘recognize[] the target as a known target from the target database.’” Id. at 17–18, 21.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Prelim. Resp. 49–50. We find Patent Owner’s argument misplaced and unavailing. In proving obviousness here, it is not necessary to show that the skilled artisan would have placed an entire IBM computer or IBM point-ofsale register within Ogasawara’s videophone. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Patent Owner does not explain why, in a system combining the teachings of Ogasawara and Bolle as proposed by Petitioner (see Pet. 27– 34), Ogasawara’s microprocessor 238 could not have been implemented by the skilled artisan using a digital signal processor as Bolle describes, such as the digital signal processor component of the IBM computer or IBM point-of-sale cash register. See, e.g., Ex. 1005, Fig. 10 (Ogasawara teaching that videophone 218 includes microprocessor 238); Ex. 1006, 7:49–62 (Bolle teaching that “calculating device 140 can also be one or more digital signal processors, either stand-alone or installed in a computer”). Accordingly, for the reasons stated in the Petition at pages 27–34 and 37, Petitioner sufficiently establishes that the combination of Ogasawara and Bolle teaches this limitation. We are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Ogasawara and Bolle to arrive at this limitation, and, as further discussed below, the invention of claim 1. Except as noted above, Patent Owner does not contend otherwise at this stage of the proceeding.” slip op. at 32
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,478,036 - PTAB · Jan 27, 2022 · IPR2021-01329 · APJ Thomas L Giannetti · IPR · Institution
Instituted IPR on claims 1–4, 9, 13–18, 23, 27, and 28; Mahaffey showed a reasonable likelihood of obviousness for claims 1, 2, 15, and 16.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. We therefore institute inter partes review as to all challenged claims of the ’034 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner contends a person of ordinary skill in the art “[a]s of May 21, 2014 . . . would typically be a person with a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cyber security, or a person with a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields,” while “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Pet. 7 (citing Cole Decl. ¶¶ 26–28). Patent Owner states, “[t]o narrow the issues for purposes of this Preliminary Response only, Patent Owner does not dispute Petitioner’s definition of a [person of ordinary skill in the art].” Prelim. Resp. 6. 2 Because the application from which the ’034 patent issued was filed after March 16, 2013, the post-AIA (“America Invents Act”) version of § 103 applies. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“More fundamentally, however, we agree with Patent Owner that “[s]imply allowing or blocking a connection is not web content filtering.” Id. In that regard, we find Patent Owner’s proposed construction of “web content filtering” as “blocking access to a webpage based on the content of the information on the webpage” to be pertinent to our analysis. Prelim. Resp. 7. We note that Petitioner has not provided an explicit construction ’034 patent specification. We find Patent Owner’s construction to be consistent with the plain meaning of the term, and therefore we adopt it for the purpose of this decision. It is self-evident that “web content filtering” of a webpage should be based on the content of the page, rather than the communications protocol by which the client receives the page. Prelim. Resp. 16–17. Applying this construction, we determine that Petitioner does not demonstrate that Syvanne teaches “web content filtering.” Filtering the protocol of a web page URL does not block access based on the content and therefore does not filter the content of the web page. Id. Accordingly, Petitioner does not demonstrate that Syvanne discloses “web content filtering.”” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The launching limitation requires that the client security application launch “one or more” of three specified functions that are designated by the selected configuration. Ex. 1001, 11:44–47. Those enumerated functions are “web content filtering, anti-virus scanning and network access logging.” Id. at 11:47–50. Patent Owner argues that “the combinations [including Syvanne] that Petitioner relies on . . . do not disclose the launching limitation, and more specifically, do not disclose one or more designated functions of web content filtering, anti-virus scanning, and network access logging.” Prelim. Resp. 9 (emphasis omitted). For the reasons that follow, we agree. Petitioner contends that Syvanne’s personal firewall performs “web content filtering” because “[b]ased on the rule base selected, the personal firewall [of Syvanne] may control what access to web content is permitted by allowing or not allowing certain connections of protocols, e.g., HTTP connections.” Pet. 25. Petitioner explains further that “[a person of ordinary skill in the art] would have understood that by blocking HTTP connections but, for example, allowing HTTPS connections, the personal firewall is performing web content filtering by only allowing access to secure websites.” Id. at 26. Patent Owner responds that Syvanne does not disclose “web content filtering” as claimed. Prelim. Resp. 15–17. We agree. As Patent Owner points out, Petitioner’s reliance on the argument that Syvanne teaches web content filtering by disclosing blocking HTTP connections but allowing HTTPS connections is misplaced. Id. at 16. Petitioner relies on Figure 3 of Syvanne as illustrating web content filtering. Pet. 25. But as Patent Owner points out, Figure 3 of Syvanne describes allowing both HTTP and HTTPS connections, even when communication is with a “potentially hostile” unidentified network. Prelim. Resp. 16 (citing Ex. 1005 ¶ 35). Thus, there is no “filtering” based on those protocols.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,894,034 - PTAB · Jan 26, 2022 · IPR2021-01229 · APJ Jason W Melvin · IPR · Institution
Instituted IPR on claims 1–16 under all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In our view, Petitioner correctly emphasizes Fintiv’s language noting that the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. Indeed, in multiple decisions Patent Owner cites for support, the Board determined that instituting review would require resolving issues that would also have been resolved by a district court. E.g., Fitbit, Inc. v. Philips N. Am. LLC, IPR2020-00828, Paper 13, 15–16 (considering the patent owner’s litigation with a non-petitioning party that would overlap with the inter partes review at issue); Mylan Labs. Ltd. v. Janssen Pharmaceutica N.V., IPR2020-00440, Paper 17, 19–23 (same, and additionally considering litigation involving the petitioner). Here, because the Intel litigation did not resolve issues presented by this proceeding, there is no chance of an inconsistent outcome. Indeed, “redoing the work of another tribunal” would only arise when that tribunal has resolved a dispute at issue before the Board. Patent Owner has not argued that resolving a dispute in this proceeding would conflict with an aspect of the Intel litigation. Thus, we do not agree with Patent Owner that, because “the [litigation] parties and the Court invested enormous amounts of time and money litigating validity and infringement issues relating to the ’373 [patent],” instituting review here would mean redoing the work of another tribunal. Prelim. Resp. 12.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11, 9 (Apr. 2, 2019). In Valve, however, the petitioner and the prior petitioner were co-defendants accused of infringement based on the same product. Id. at 9–10. Patent Owner argues that the Board has found a relationship between petitioners when one uses substantive challenges from an earlier petition. Prelim. Resp. 21 (citing Ericsson Inc. v. Uniloc 2017 LLC, IPR2019-01550, Paper 8, 12). Ericsson imposed a relationship in light of the derivative nature of the petition at issue. Ericsson, IPR2019-01550, Paper 8, 12. That decision, however, has not been designated as precedential or informative by the Board, and other decisions have determined that factor 1 weighs against discretionary denial for an independent petitioner. E.g., United Fire Protection Corp. v. Engineered Corrosion Solutions, LLC, IPR2018-00991, Paper 10 (determining that petitioner independence weighed against discretionary denial, but that substantive similarity with an unrelated prior petition meant the factor only moderately weighed against discretionary denial). We determine that factor 1 weighs somewhat against discretionary denial because Petitioner has not filed a prior petition, but did copy its substantive grounds from a prior petition. That the Board has not substantively addressed the merits of the prior petitions, in our view, weighs against discretionary denial, because that approach best balances the desires to improve patent quality and patent- system efficiency against the potential for abuse of the review process by repeated attacks on patents. See General Plastic, IPR2016-01357, Paper 19, 16–17. We view substantive consideration as an important factor in that balance, because to determine otherwise would asymmetrically insulate patent owners from potential abuse without addressing the desire to improve patent quality. Patent Owner suffers no abuse from having this tribunal consider the merits of these grounds for the first time.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The facts here are not remotely similar. The Intel IPR was not denied for abusive filing practices, but rather was denied to avoid overlap with a parallel district-court litigation. See IPR2020-00158, Paper 16, 4–14. This proceeding involves a different petitioner, which has not before petitioned for review of the ’373 patent. Those facts show that this Decision does not involve potentially abusive filing practices by the same challenger, as was at issue in Vivint. Patent Owner has not identified how instituting review would be inconsistent with a prior decision on this patent. As explained above, because no invalidity issue was presented in district court underlying the prior application of Fintiv, we reach a different conclusion under that doctrine based on different facts here. Thus, Vivint is not germane to our decision. As to the merits of Patent Owner’s position that we should decline institution under § 325(d), that argument is not persuasive. The arguments in the Petition were previously presented to the office, in the Intel IPR. See Advanced Bionics, LLC v. MED-EL Elektromedizinische, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). Thus, we consider factors including the Office’s record from prior reviews and Petitioner’s showing of error in that consideration. Id. at 10. Our evaluation of Petitioner’s substantive challenge persuades us that the Petition presents a sufficient basis to proceed with institution here. We therefore do not discretionarily deny review in light of the Intel IPR petition.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s contentions for unpatentability over Harris, Abadeer, and Zhang. Based on the present record, we conclude that Petitioner has shown a reasonable likelihood it will prevail with respect to unpatentability of claim 1 over Harris, Abadeer, and Zhang—Petitioner’s showing justifies institution. Pet. 25–46. Our conclusion considers Petitioner’s stated motivations for modifying Harris in light of Abadeer and Zhang. We have reviewed Petitioner’s contentions for claims 2–7, 9–11, and 13–16 as unpatentable over Harris, Abadeer, and Zhang (Pet. 47–67), and reach the same conclusions for those claims. C. UNPATENTABILITY GROUNDS INCLUDING CORNWELL OR BILAK Patent Owner does not separately challenge Petitioner’s grounds that include Cornwell or Bilak with Harris, Abadeer, and Zhang. We have reviewed Petitioner’s contentions for (1) claims 2, 11, and 12 as unpatentable over Harris, Abadeer, Zhang, and Cornwell (Pet. 67–72); and (2) claim 8 as unpatentable over Harris, Abadeer, Zhang, and Bilak (Pet. 72– 74) and conclude that Petitioner has shown a reasonable likelihood it will prevail with respect to those grounds. III. CONCLUSION For the reasons discussed above, we conclude Petitioner has shown a reasonable likelihood of prevailing with respect to at least one claim. We have evaluated all of the parties’ submissions and determine that the record supports institution. We conclude that instituting review in this proceeding is in the interest of efficient administration of the Office and the integrity of the patent system. See 35 U.S.C. § 316(b). Accordingly, we institute an inter partes review of all challenged claims under all grounds set forth in the Petition.” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,523,373 - Trend Micro Inc. v. Cupp Computing AsInstitutedPTAB · Jan 19, 2022 · IPR2021-01237 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1, 7, 9, 16, 22, and 24 on all asserted grounds, finding a reasonable likelihood of prevailing and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Gordon was cited to the Examiner of the ’632 patent in an IDS. Pet. 61; Prelim. Resp. 21. Because Gordon was cited to the Examiner, and in view of Patent Owner’s argument that it was “considered,” we now turn to the second part of the Advanced Bionics framework and evaluate Becton, Dickinson factors (c), (e), and (f), to determine whether Petitioner has demonstrated that the Office erred in a manner material to the challenged claims’ patentability. Advanced Bionics, Paper 6 at 7–11.” slip op. at 8
- Parallel petitionsDecided for petitioner
“For its part, Petitioner maintains that there are material differences between the two IPR petitions that warrant granting both. Paper 13, 1–4. For example, Petitioner points out that the two IPR petitions “use different prior art references . . . that present different material issues.” Id. at 2. Also, “the various prior art references disclose certain claim limitations in materially different ways.” Id. Petitioner asserts also that it could not have adequately addresses the two petition’s three principal references (Joseph,7 Hall,8 and Gordon) in just one petition. Id. at 5. As to the two PGRs, which Petitioner admits are “substantively duplicative of the IPR petitions” (Paper 13, 2), Petitioner explains that they were filed “out of an abundance of caution,” in case the Board were to decide that the ’632 patent is an “AIA patent.” Id. at 1–2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We are persuaded that the Sotera stipulation here is sufficient to mitigate any overlap in the proceedings and weighs strongly in favor of institution. Overall, we conclude that these factors weigh in favor of not exercising our discretion to deny institution. 3. Factor 5” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“disclosures that teach every element of the challenged claims. Pet. 18–49. Other than as discussed above, Patent Owner does not additionally challenge Petitioner’s analysis in its Preliminary Response. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates that claims 1, 7, 9, 16, 22, and 24 would have been obvious over Gordon and Gardner. 2. Obviousness of Claims 7 and 22 based on Gordon, Gardner and Chang, and Claims 9 and 24 based on Gordon, Gardner, and Meenan” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,951,632 - Trend Micro Inc. v. Cupp Computing AsInstitutedPTAB · Jan 19, 2022 · IPR2021-01236 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 9, 16, and 24 under all asserted grounds, finding a reasonable likelihood of prevailing on the Joseph- and Hall-based obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in computer science, electrical engineering, or a comparable field of study, plus at least two years of professional experience with computer security systems, or the equivalent.” Pet. 12 (citing Jakobsson Decl. ¶ 60). At this stage, Patent Owner does not provide a description of the person of ordinary skill. Petitioner’s description is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s description.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner responds that “[t]he plain and ordinary meaning of the term in light of the ’632 Patent Specification is a device that manages security of a security system.” Prelim. Resp. 27. Patent Owner continues, “the specification describes that the security administration device ‘manages the mobile security system 345(a), the mobile security system 345(b), and the network security system 320.’” Id. (citing Ex. 1001, 6:8–10). At this stage we are more persuaded by Petitioner’s construction. Petitioner’s construction is consistent with the term’s plain language as well as the specification and is supported by expert testimony. See Jakobsson Decl. ¶ 65 (“The plain and ordinary meaning of this term includes a device that performs security administration. This is consistent with the ’632 patent’s disclosure that the security administrator device 325 may perform various security administration tasks.”) See, e.g., Ex. 1001, 24:55–57 (describing security administrator 325 as an “administrator device”).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“As stated above, under factor (c) we consider “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” We agree with Petitioner that this factor favors not exercising our discretion to deny the Petition. Pet. 70. There is no dispute that the examiner did not apply Joseph in rejecting any claims of the ’632 patent or discuss Joseph in the examiner’s comments or reasons for allowance. Under factor (c), this strongly favors not exercising our discretion to deny the Petition.” slip op. at 19
- Parallel petitionsInstitution denied discretionary otherDenied
“In this case and in PGR2021-00100, Petitioner challenges claims 1, 9, 16, and 24. In IPR2021-01237 and PGR2021-00101, Petitioner challenges claims 1, 7, 9, 16, 22, and 24. Patent Owner contends that the Board should exercise its discretion under 35 U.S.C. § 314(a) to deny the Petition “because two PGR and two IPR petitions are not necessary nor proper.” Prelim. Resp. 10. For its part, Petitioner maintains that there are “material differences” between the two IPR petitions that warrant granting both. Paper 13, 1–4. For example, Petitioner points out that the two IPR petitions “use different prior art references . . . that present different material issues.” Id. at 2. Also, “the various prior art references disclose certain claim limitations in materially different ways.” Id. Petitioner asserts also that it could not have adequately addressed the principal references (Joseph, Hall, and Gordon7) in one petition. Id. at 5. As to the two PGRs, which Petitioner admits are “substantively duplicative of the IPR petitions” (Paper 13, 2), the Petition explains that they were filed “out of an abundance of caution,” in case the Board were to decide that the ’632 patent is an “AIA patent.” Id. at 1–2.” slip op. at 21
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,951,632 - PTAB · Jan 11, 2022 · IPR2021-01081 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 7, 9, 18, and 20: claims 1, 2, 4, 7, 9, and 18 over Ogasawara and Bolle, and claim 20 over Ogasawara, Bolle, and O’Gorman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We do not agree that these factors favor exercising our discretion to deny inter partes review. Other than citing the Markman hearing by the district court, which resulted in a Claim Construction Ruling covering one limitation in the Challenged Claims (see Ex. 1041), and service of initial discovery requests (Prelim. Resp. 27), Patent Owner does not support its contention that the parties and the Court have made a “tremendous investment” in the District Court Case (id. at 22). Moreover, Petitioner has been reasonably diligent, filing the Petition “shortly after the parties filed their joint claim construction statement” and within a few months of receiving Patent Owner’s infringement contentions. Pet. 64 (Petitioner highlighting that “Patent Owner filed the parallel district court litigation on August 27, 2020, during the global pandemic with work and travel restrictions, asserting infringement of eight patents with 264 total claims.”); see Prelim. Resp. 22 (acknowledging Petitioner filed the Petition about three months from service of infringement contentions in an eight-patent case). Furthermore, citing Sand Revolution II, LLC v. Continental Intermodal Group–Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative), Petitioner filed a stipulation that if inter partes review is initiated, it will not assert invalidity of the asserted claims in the District Court Case based on any of the grounds listed in the Petition, “or on any other ground involving the Ogasawara, Bolle, and O’Gorman references, alone under 35 U.S.C. § 102, or in combination with any other reference under 35 U.S.C. § 103.” Ex. 1011, 2. Patent Owner criticizes this as a “very narrow” stipulation that “is hardly any waiver at all.” Prelim. Resp. 21, 25. We disagree. Although Petitioner has not stipulated to forgo relying on all the patents and prior art publications that could have reasonably been raised in the inter partes review (see Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (precedential as to § II.A.)), Petitioner’s stipulation will likely contribute to streamlining the issues presented there as to the ’529 patent. See Sand Revolution II, Paper 24 at 11–12 (similar stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions”). We are persuaded that the stipulation here is sufficient to “mitigate[] to some degree” the overlap caused by Petitioner’s reliance on Ogasawara and Bolle. Accordingly, we find on balance that these factors weigh against exercising discretion to deny inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’529 patent is unpatentable. Accordingly, we institute an inter partes review as to all Challenged Claims of the ’529 patent on all grounds raised in the Petition. We base our factual findings and conclusions at this stage of the proceeding on the evidentiary record developed so far. This is not a final decision as to the construction of any claim term or the patentability of any claim. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived, even if they were presented in the Preliminary Response.” slip op. at 3
- BurdenOther
“Based on the record before us, we find Petitioner does not fail to identify with particularity the grounds on which the challenge to each claim is based. Indeed, in accordance with 37 C.F.R. § 42.104(b)(2) and as noted above, Petitioner explicitly identifies Ground 1 as based on obviousness over the combination of Ogasawara and Bolle. Pet. 7. Moreover, in identifying its grounds for unpatentability, Petitioner identifies neither anticipation by Ogasawara nor obviousness based on Ogasawara alone as such grounds. We also do not find confusing Petitioner’s typical attempts to account for multiple potential theories of claim construction while also stating that no claim construction is necessary. What Petitioner is alleging, in effect, is that whatever is the theory of claim construction, Petitioner prevails. Accordingly, we find Patent Owner’s various “shifting-sands” arguments unavailing.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 20–21 (citing Ex. 1003 ¶¶ 51–52). Patent Owner does not present an alternative definition at this stage of the proceeding. See generally Prelim. Resp. We regard Petitioner’s proposed definition as reasonable, and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 51–52).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,881,529 - PTAB · Jan 11, 2022 · IPR2021-01332 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–3, 6, and 18 for both asserted obviousness grounds, finding a reasonable likelihood of success on Ogasawara and Bolle.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. We therefore institute inter partes review as to all of the challenged claims of the ’004 patent and all of the asserted grounds of unpatentability stated in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“We are persuaded that the stipulation here is sufficient to “mitigate[] to some degree” the overlap caused by Petitioner’s reliance on Ogasawara, Bolle, and Rhoads. We conclude that these factors weigh against exercising discretion to deny institution. 3. Factor 5 Neither party disputes that Petitioner and Patent Owner are parties to the district court proceeding. Pet. 61; Prelim. Resp. 29. Because no trial date has been set, however, it is uncertain whether the final written decision in this case will come before or after the trial. Under these circumstances, the fact that the Petitioner is a defendant in the district court case may actually weigh against exercising discretion to deny institution. See MED- EL Elektromedizinische Geräte Ges.m.b.H v. Advanced Bionics AG, IPR2020-00190, Paper 15 at 14–15 (PTAB June 3, 2020) (Institution Decision) (overlap of issues and parties, especially with an uncertain trial date, weighs in favor of institution because petitioner would be estopped in district court from raising the same issues upon issuance of the Board’s final written decision).” slip op. at 23
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court construed the “recognize” limitation to mean “recognizing the at least one object in the scene as a target object based at least in part on the at least one characteristic of the video stream by comparing the at least one characteristic with characteristics of objects stored in a database to find a match.” Id. at 19. In adopting this construction, the district court remarked: “The Court agrees with Defendants that the ‘recognizing’ step requires querying a database.” Id. The district court rejected parts of Petitioner’s proposed construction there, finding no reason to change “recognizing” to “identifying,” and also finding no reason to change “based at least in part on the at least one characteristic” to “matching the at least one characteristic.” Ex. 2006, 17–19. With regard to the requirement of “finding a match,” the district court explained: “The intrinsic evidence consistently emphasizes that the system compares parameters in order to match a target object with an object in a database in order to ‘recognize’ the target.” Id. at 18; see also id. at 18–19. The district court also did not adopt Patent Owner’s plain and ordinary meaning.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See 5 Because the application from which the ’004 patent issued was filed before March 16, 2013, the pre-AIA (“America Invents Act”) versions of §§ 102 and 103 applies. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal. B.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,324,004
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.