- PTAB · May 23, 2024 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–10 and all petition grounds, finding a reasonable likelihood of success on Foster grounds for claims 1–3, 7, and 8 and claims 4–6, 9, and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . 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). 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). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’609 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’609 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’609 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Bhattacharjee (Ex. 1003 ¶¶ 37–38).” slip op. at 9
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“repeated, would not necessarily indicate that the chunks, each encrypted with a separate share key, would be again encrypted using the session master key (the cryptographic operation Petitioner contends would be reordered/repeated).” Prelim. Resp. 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been “pointless:” Indeed, [the skilled artisan] would recognize that encryption with the alleged first key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged first key (i.e., the session master key) would render the splitting and encryption of the alleged first key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 101–105. Thus, we find Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) more persuasive than Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 101–105) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Versions.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“Here, however, Petitioner does not insist any construction is incorrect. Rather, Petitioner presents alternative rationales for why the claims are unpatentable, stating that the Petition demonstrates “unpatentability regardless of which proposed construction is correct.” Pet. 9. Even though some stated rationales are based on Patent Owner’s constructions in the District Court Case, the Petition complies with the rule because it explains how the Challenged Claims are to be construed under the alternative challenges. See 37 C.F.R. § 42.104(b)(3). The rule “does not require Petitioner to express its subjective agreement regarding correctness of its proffered claim constructions or to take ownership of those constructions.” Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00084, Paper 14 at 11 (PTAB Apr. 25, 2018).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,068,609 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · May 13, 2024 · IPR2024-00226 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted obviousness grounds based on Evenhaim; Evenhaim with Settimi; Dick with Landi; and Dick, Landi, with Murphy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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. See 35 U.S.C. § 314(a) (2018) (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”). We therefore institute inter partes review as to all of the challenged claims of the ’641 patent and all asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108(a) (2023) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent would have possessed “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Clark Decl. ¶ 22). Petitioner adds that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. We regard Petitioner’s description as consistent with 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). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“from Patent Owner’s claim-construction brief in the related district court litigation and “adopts these constructions for this proceeding.” Pet. 8 (citing Ex. 1010, 9–20). Patent Owner’s brief identifies these as “disputed claim terms.” Ex. 1010, i (Table of Contents). The brief indicates that Petitioner disputes Patent Owner’s construction for each of the terms. Id. at 1 (referring to the parties’ Joint Claim Construction Statement). As Petitioner expressly “adopts these constructions for this proceeding” (Pet. 8), we understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under 37 C.F.R. 42.104(b)(3) (2023). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp., 868 F.3d at 1017. Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 16
Claim constructioncites KSRPatents in suitUS 9,118,641 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Apr 8, 2024 · IPR2023-00030 · APJ James P Calve · IPR · Final written decision
Claims 1–22 are unpatentable under § 103 over the Wang-based and Chambers-Terrill-based combinations listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“The parties substantially agree on the level of ordinary skill in the art. Consistent with their proposals, we adopt Petitioner’s definition with Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant work or research experience also suffice. PO Resp. 7 (asserting that “Patent Owner’s description of the level of ordinary skill in the art is essentially the same as that of Petitioner”). This level of ordinary skill is consistent with the description of the relevant field of invention and background art in the ’941 patent (see Ex. 1001, 1:14–3:51) and the prior art. However, the outcome of our Decision would be the same under either party’s proposal.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner
“The ’941 patent describes prior art firewalls as “often used to provide segmentation within internal networks [to] help stop the spread of attacks” and provide “the ability to see and control internal network traffic [that] can be lost” when firewalls move to the cloud. Ex. 1001, 1:35–40 (emphasis added). Thus, prior art firewalls can control internal network traffic between endpoints within the network. Nor does the claim language exclude prior art firewalls from controlling endpoint to endpoint connections. 4. Conclusion We determine that the ’941 patent does not clearly and unmistakably disavow legacy firewalls. The sole use of that term in the specification does not identify what features are disavowed (Ex. 1001, 4:52–67; Reply 2), and the ’941 patent describes prior art firewalls as having features and functions that P/PoPs perform (id. at 3–5) including segmenting internal networks and controlling internal network traffic. Ex. 1001, 1:35–40; see Tr. 12:18–15:1. Thus, we determine that “controlling endpoint to endpoint connections within the enterprise network” has its ordinary and customary meaning, which may include controlling endpoint to endpoint connections via firewalls. We discuss this limitation further in Section III.D.2.c. infra.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“5. Analysis We find that Petitioner’s asserted modifications with Pasdar would have improved Wang because Wang provided services at the firewall level, but Pasdar “implement[ed] these services at the P/PoP(s), offloading some tasks from individual firewalls and thus . . . enhancing performance.” Reply 17 (“Patent Owner ignores other benefits, like the flexibility and granular customization, that Pasdar’s P/PoP system would offer to Wang’s system.”). We find that Pasdar’s P/PoPs would customize Wang’s initial settings to enhance security as the network expands and would have allowed Wang’s distributed devices to leverage a single global perimeter policy for security, privacy, and application resiliency and availability as Pasdar teaches. Pet. 45 (quoting Ex. 1005 ¶ 31; citing Ex. 1002 ¶ 106); id. at 43–45; Reply 20. We agree with Dr. Lee’s testimony that a skilled artisan would have been motivated to add Pasdar’s functionalities to route communications to a P/PoP and customize a P/PoP’s security stack to Wang. Ex. 1002 ¶ 106. The upgrade would have improved Wang’s similarly and would have had a reasonable expectation of success by using Wang’s calls to modify a P/PoP’s security stack to implement a policy, and combining these known prior art elements according to their known functions would have yielded predictable results as Dr. Lee testifies. Id. ¶ 107. See KSR, 550 U.S. at 416.” slip op. at 35
Patent outcomesUS 10,826,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,826,941 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Apr 3, 2024 · IPR2023-01442 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under either anticipation ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. In addition, for the reasons stated on the merits of the Petition, we do not reach the question of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a). We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have been an individual who, as of July 18, 2002, the filing date of the ’667 Patent, had either: (1) a Bachelor’s Degree or higher in the field of electrical engineering, computer engineering, or computer science and at least one year of related practical experience; or (2) at least four years of practical experience in data management.” Pet. 9 (citing Williams Decl. ¶¶ 30–31). Patent Owner does not provide a description of the person of ordinary skill or dispute Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes claim constructions for our consideration. Petitioner “gives the claim terms their plain and ordinary meaning in light of the specification and prosecution history as would have been read by a [person of ordinary skill].” Pet. 9. Patent Owner does not comment on claim construction. We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to construe claim terms to resolve the issues in dispute. E. Description of the Prior Art References” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“The Federal Circuit addressed the legal standard for anticipation in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016): “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” 815 F.3d at 1341 (citation omitted) (footnote omitted). C. Level of Ordinary Skill in the Art” slip op. at 7
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,020,667 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Apr 2, 2024 · IPR2023-01441 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny institution of inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“persuasive. As both parties note, the phrase in question recites “creating” a second data miner, which requires the generation of a new data miner. Petitioner’s declarant testifies that during prosecution of the ’526 patent prior art references were “expressly distinguished” because the prior art merely “pick[ed] a pre-existing search engine” or fell short because “no new miners [were] created.” Ex. 1008 ¶ 49 (citing Ex. 1002, 83, 34); accord Ex. 2001 ¶ 57 (similar testimony from Patent Owner’s declarant). We agree with the parties that this phrase requires the generation of a new data miner. Patent Owner argues that Petitioner’s construction falls short because it does not properly address the requirement that the second data miner be created “in response to the customer request.” Patent Owner states, and we agree, that “provid[ing] customized results to the user based on the customized parameters of the user search request” does not address the requirement that the second data miner be created “in response to” a customer request. Prelim. Resp. 9. In support of Patent Owner’s assertions, Patent Owner’s declarant points out that “as described with reference to FIG. 2 of the ’526 Patent, ‘customer requests for information can be received’ at block 66 and then at block 68, [‘]additional low level miners can be written in response, or high level miners, if required and not yet written, can be created.’” Ex. 2001 ¶ 61 (citing Ex. 1001, 8:32–35) (emphasis added). As stated in the ’526 patent a “‘miner’ or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66. The ’526 patent further notes that “the data miners are modular components that have specific input and output specifications.” Id. at 6:25–26. Further, “[m]iners are specified in terms of the data, usually as indicated by the below-described keys, that must be available when they start, and the data (including other keys) that they will create during successful processing.” Id. at 6:36–40. Thus, our review of the intrinsic record persuades us that creation of a second data miner requires the creation of a new “analysis engine,” and not just the provision of customized parameters to an existing “analysis engine.” Therefore, for the purposes of this decision, we construe the phrase “creating at least a second data miner in response to the customer request for information,” to require (1) the creation of at least one new second data miner, (2) that this creation be done in response to a customer request.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“As to the first argument, we agree with Patent Owner that Petitioner has not shown sufficiently that Jacobsen’s site ranking is created in response to a user request. Jacobsen’s site ranking feature “analyzes the Internet (i.e., the sites found) to determine the degree to which sites have been found interesting by others in the desired context/profession.” Ex. 1003 ¶ 67. A word score is saved for each word on each page (i.e., except for stop words, as discussed above). When a user enters a query, the inventive SSSE determines a set of (relevant) pages that contain the query terms. For each page, the word scores are summed for the words of the query to compute a site ranking for that page. The site rankings for the pages are then used in determining how to display the search results to the user. Id. ¶ 69. Based on our review of Jacobsen’s disclosures, we are persuaded that the query is an input to the site ranking feature. As described in the ’526 specification, a “‘miner’' or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66 (emphasis added). Site ranking in Jacobsen is performed after a user query, but on the record before us, Petitioner has not shown that the analysis engine used to rank the sites is not created “in response to” the user query. See also Pet. 14 n. 7 (stating that Jacobsen discloses “the use of a pre-existing template to search the results of a first data miner”). In addition, Petitioner has not shown sufficiently that the site ranking feature in Jacobsen would disclose a data miner as recited in the claims. The ’526 patent describes prior art systems that “generat[ed] an inverted index of words that occur on Web pages.” Ex. 1001, 1:22–23. User queries were provided with output based on that index and the results “returned are usually ranked by relevance using e.g., link information or key word frequency of occurrence.” Id. at 1:29–31. Petitioner’s declarant describes these disclosures are applicant admitted prior art. Ex. 1008 ¶ 52. The ’526 patent criticizes this prior method as inefficient because, despite the ranking “finding particular types of information typically entails a great deal of mundane sifting through query results by a person” and this process is “labor-intensive and mundane,” ranking “can consume an excessive’ amount of time.” Ex. 1001, 1:31–35, 1:42–43, 2:5–6. In contrast, the ’526 patent’s system purportedly “integrates the knowledge of many experts to sift through a large corpus of data to respond to what might be relatively complex requests for information.” Id. at 3:9–11. Its data miners are analysis engines that operate based on expert rules. Id. at code (57), 5:63– 66. Petitioner’s allegations have not persuaded us that Jacobsen’s site ranking feature overcomes the problems of the prior art ranking system. Accordingly, based on the record before us, we determine that” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success
“E. Alleged Obviousness of Claims 2 and 35 Over Jacobsen, and Over Jacobsen and Jaramillo, and Alleged Obviousness of Claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 Over Jacobsen and Hegli Petitioner asserts that dependent claims 2 and 35 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen, and as obvious over Jacobsen and Jaramillo. Pet. 4, 32–38. Petitioner also asserts that dependent claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen and Hegli. Pet. 4, 38–50. Petitioner’s assertions here rely on the same disclosures from Jacobsen regarding the above discussed independent claims and do not remedy the above noted deficiency. As such, on the record before us, we are not persuaded by Petitioner’s Jacobsen-based challenges to claims 2, 6–9, 11, 16, 17, 35, 39–42, 44, 49, and 50. F. Alleged Anticipation of Claims 1, 6, 9, 11, 13, 19, 20, 34, 39, 42, 44, 46,” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,010,526 - PTAB · Mar 20, 2024 · IPR2023-01373 · APJ Carl W Whitehead Jr · IPR · Institution
The Board instituted review of claims 1–8 and 13–22 on the asserted § 103 ground over Bigbee and Nguyen after finding a reasonable likelihood of prevailing on claim 19.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts a person of ordinary skill in the art “would have at least a bachelor’s degree in Computer Science, Computer Engineering, or equivalent, and at least two years of prior work experience with computer architecture design, including fault tolerant computer architecture design.” Pet. 1 (citing Ex. 1002 ¶ 29). Petitioner further asserts that “[a]dditional education could substitute for professional experience and vice versa.” Id. (citing Ex. 1002 ¶ 29).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner contends that the terms ‘“detection of loss of lockstep’ and ‘detecting loss of lockstep’ should be construed to include both mismatch errors and errors that may eventually result in mismatch errors.” Pet. 17 (citing Ex. 1001, 4:56–67). In other words, Petitioner contends the terms include “a ‘precursor to lockstep mismatch,’” i.e., “detecting an error that may eventually cause a lockstep mismatch error.” Id. (citing Ex. 1001, 4:56–67). Petitioner contends the “specification provides detecting these two types of errors as examples of detection of LOL.” Id. (citing Ex. 1001, 2:26–59, 4:37–67). Petitioner contends the specification states that “[l]ockstep mismatch is one way of detecting an LOL [between the master processor 12A and slave processor 12B].” Id. (citing Ex. 1001, 4:56–57). Petitioner contends the specification “is consistent with the dependent claims, which expressly define detecting loss of lockstep as either of the two options.” Id. at 18 (citing Ex. 1001, 15:7–19, 30–49 (claims 1, 4–8)). Petitioner contends that the terms ‘“lockstep is recoverable’ and ‘loss of lockstep is recoverable’ should be construed as ‘lockstep is recoverable from the detected loss of lockstep’ because the specification only describes lockstep recovery from the detected LOL—‘whether the detected LOL is a recoverable LOL.”’ Id. at 19 (citing Ex. 1001, 5:56–6:1). At this stage of the proceeding, Patent Owner does not challenge Petitioner’s position on these terms. See Prelim. Resp. 13. At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F. 3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ evidence and contentions, we do not observe a dispute over the meaning of these terms that is necessary to resolve at this stage. Accordingly, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Furthermore, on February 10, 2024, the Eastern District of Texas granted Foras Technologies Ltd., Kia Corp., and Kia America Inc.’s Joint Motion to Stay in that case. Ex. 1035, 1–2; Ex. 1036; see Reply 1–2. Therefore, because the trial in the district court litigation has been stayed, this factor weighs heavily against discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Biosystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,502,958 - PTAB · Mar 19, 2024 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Final written decision
The Board cancelled claims 1–27 and denied substitute claims 28–51 because the original disclosure lacked written-description support for the claimed CSP limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposed level of ordinary skill in the art, with the exclusion of “at least” because it introduces ambiguity. Inst. Dec. 8. Patent Owner “does not dispute the Board’s findings on the qualifications of a POSA [person of ordinary skill in the art] for purposes of this proceeding.” See RMTA 13. We determine that Petitioner’s definition, with the exclusion of “at least,” is consistent with the prior art of record and the skill reflected in the Specification of the ’034 patent and we use this level of skill here in the evaluation of the Revised Motion to Amend.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that “claim construction is not necessary” and that “the meaning of the claims would be easily understood by a POSA.” RMTA 13. In the Petition, Petitioner proposed constructions for the terms “client device” and “first server,” and the original claims were rendered obvious under this construction. Pet. 23–27. Petitioner does not assert that the substitute claims of the Revised Motion to Amend are anticipated or rendered obvious by prior art or are patent ineligible. See generally RMTA Opp. Nor does Petitioner’s patentability challenge of the substitute claims contend that express construction is needed. See generally id. For purposes of this Decision, we determine that express claim construction is unnecessary. We need only construe terms that are necessary to resolve disputes. 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 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989); All Dental Prodx LLC v. Advantage Dental Prods., 309 F.3d 774, 779 (Fed. Cir. 2002). The issue here, however, is whether the disclosure of the ’034 patent would have reasonably conveyed to a person of ordinary skill that the inventors had possession of the CSP Limitations. Ariad, 598” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“to cancelling claims 1–27; and deny-in-part the Motion to Amend as to proposed substitute claims 28–51. In summary: Motion to Amend Outcome Claim(s) Original Claims Cancelled by Amendment 1–27 Substitute Claims Proposed in the Amendment 28–51 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied” slip op. at 20
Claim construction§ 112 disclosurePatents in suitUS 11,272,034 - PTAB · Mar 14, 2024 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Final written decision
The Board granted Patent Owner’s non-contingent motion to amend, cancelling claims 1–34 and replacing them with substitute claims 35–66 supported by the written description.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“complies with the legal requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. Lectrosonics, Paper 15 at 4, 7–8. Specifically, Patent Owner must show that the amendments do not enlarge the scope of the claims or introduce “new matter.” See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii)). Lectrosonics describes “new matter” as follows:” slip op. at 4
- 112 supportGranted
“description support for the proposed substitute claims. See 35 U.S.C. § 326(a)(9); 37 C.F.R. § 42.221; Lectrosonics, Paper 15 at 7–8. The written description test is met when the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with this argument because it is not consistent with the ’953 patent specification or the plain meaning of “replace.” Neither party requested a special construction of the term “replace.” We see no merit in Petitioner’s contention that the plain meaning of “replace” in Figure 32 does not require removal of the device being replaced. The contention that the plain meaning of “replace” does not require “removing” was explored with Petitioner’s counsel at the oral argument: THE BOARD: If you replace a player in a football game or baseball game, a new player goes in and replaces that player. You don't add a 12th, a 12th player or a 10th player to a baseball team. You replace the player that’s there with a different player. Isn’t that what replacement is all about? COUNSEL FOR PETITIONER: Your Honor, in that context, it absolutely is. Because there’s no other way to understand that. You know, but we’re not talking about baseball or people here obviously. Hearing Tr. 18:23–19:3 (emphasis added).” slip op. at 15
Claim constructionPatents in suitUS 11,349,953 - Meta Platforms, Inc. v. Almondnet, Inc.All claims unpatentablePTAB · Mar 13, 2024 · IPR2022-01436 · APJ Lynne H Browne · IPR · Final written decision
Claims 11, 13–16, 19, and 20 are unpatentable: the Board found them obvious over the stated Rosenberg combinations, reaching neither Merriman ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention of the ’582 Patent “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 12. (citing Ex. 1002 ¶¶ 10–14). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not challenge this definition of the level of skill. PO Resp. 5. For purposes of this Decision, we also 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “does not believe an express claim construction is necessary at this time for this IPR” and Patent Owner “agrees that claim construction is not necessary to resolve any issue . . . and that the plain and ordinary meaning of the claim language should be applied.” See Pet. 13 (citing Ex. 1002 ¶ 37); PO Resp. 6. We agree with the parties that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“(5) Discussion of Limitation (b) We agree with Petitioner and find that Rosenberg meets limitation (b) under either theory advanced in the Petition and credit the testimony of Dr. Schmandt that Rosenberg discloses automatic URL redirection as required by this limitation. Ex. 1002 ¶ 117. During oral argument, Petitioner noted that “[t]he specific embodiment in Rosenberg [that] is being relied on which uses frame tags” discloses URL redirection and argued that “[t]he fact that you could bypass [URL redirection] with an edge case air scenario where maybe you can type a URL directly . . . doesn’t prevent [Rosenberg] from meeting the claim limitation.” Tr., 16:25–17:4. Even if we assume for both theories that Patent Owner is correct that Rosenberg discloses instances where the partial profile is received without URL redirection, that does not negate the fact that Rosenberg discloses instances wherein the partial profile is received as a result of automatic URL redirection. Ex. 1003, 5:36–38, 8:56–68. We agree with Petitioner that Rosenberg’s disclosure of such instances is sufficient to meet the requirements of limitation (b) because “prior art that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.” Hewlett-Packard Co., 340 F.3d at 1326.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner’s argument that Petitioner’s reasoning in support of its challenge only applies to two servers is undermined by Dr. Sherwood’s testimony that “a POSITA would seek to create a system that could have been scaled to an arbitrary number of servers, because Rosenberg, Zeff, and Sterne all teach the desirability of such scaling.” Ex. 2001 ¶ 59. Patent Owner’s argument also ignores the fact that Rosenberg repeatedly discloses that its method can be applied to multiple servers. See, e.g., Ex. 1003, 4:16– 19. Moreover, Patent Owner’s argument assumes that one of ordinary skill in the art would not have known how to implement Rosenberg’s method with more than one server. Such arguments are unconvincing, because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. (b) Alleged Additional Reasons Why Petitioner’s Reasoning Lacks Rational Underpinning Regarding Patent Owner’s contention that “the Petition’s ‘visible frame’ approach significantly increases visual clutter,” we agree with Petitioner that this argument does “nothing more than confirm the unremarkable fact that the frame tag embodiment, as with almost all user interface decisions, would have offered both benefits and trade-offs.” PO Resp. 26; Pet. Reply 10. We credit Dr. Schmandt’s testimony that “[a]n ordinarily skilled artisan would thus have been motivated, depending on the needs of the particular system, to employ the frame tag embodiment in Rosenberg to obtain benefits not offered by the other disclosed alternatives.” Ex. 1019 ¶ 23. We further credit Dr. Schmandt’s testimony that any “so-called increase in ‘visual clutter’ also results in an increase in the amount of usable information that can be displayed to the user within the browser window.” Id. ¶ 24.” slip op. at 37
Patent outcomesUS 8,244,582 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,244,582 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Mar 6, 2024 · IPR2022-01587 · APJ James P Calve · IPR · Final written decision
Claims 1–8 and 11–18 are unpatentable as obvious under § 103 over the asserted combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review of claims 1–8 and 11–18 (the “challenged claims”) of U.S. Patent No. 10,237,282 B2 (“the ’282 patent”) (Ex. 1001). Paper 2 (“Pet.”), 1. Fortinet, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying the standard in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims on all grounds asserted in the Petition. Paper 9 (“Dec. Inst.”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“3. Motivation to Combine and Expectation of Success Petitioner asserts a skilled artisan would have combined Nagayama” slip op. at 19
Patent outcomesUS 10,237,282 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,237,282
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.