- PTAB · Jul 1, 2022 · IPR2022-00353 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 6–11, 13, 16, 18–25, 29–34, 36, 39, and 41–46 on all asserted grounds, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Under factor (c) and based on the record before us, the fact that Crowds was not the basis of rejection in the prosecution of the ’344 patent nor was identified by the parties as the basis of rejection in any of the related patents weighs strongly against exercising our discretion to deny institution under 35 U.S.C. § 325(d). See Becton Dickinson, Paper 8 at 17; see also Kayak Software Corp. v. Int’l Bus. Machs. Corp., CBM2016-00075, Paper No. 16 at 11 (PTAB Dec. 15, 2016) (informative). As such, the record does not demonstrate the extent to which the Examiner considered Crowds alone or in combination with RFC 1122 and RFC 2616, as asserted in this Petition and applied to the challenged claims. Under factors (e) and (f), and as discussed infra at Section IV.D, Petitioner has provided sufficient evidence that Crowds discloses every limitation of the independent claim of the ’344 patent. Additionally, the examiner did not have the benefit of the claim construction of the district court, which we have adopted here (infra Section IV.B), which included broad constructions of the terms “client device” and “second server.” We also consider these factors to weigh strongly against exercising our discretion to deny institution under 35 U.S.C. § 325(d). Accordingly, in view of the issues addressed above, we determine that the evidence supports that the Office erred in a manner material to the patentability of challenged claims. For the foregoing reasons, we are not persuaded to exercise our discretion under § 325(d) to deny institution.” slip op. at 10
- 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[e].8” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had 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 date of the invention. Pet. 12–13 (citing Ex. 1003 ¶ 30). 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. 33 (citing Ex. 2017 ¶ 21). Patent Owner acknowledges, however, 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 ’344 patent and the prior art before us.6 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 11
- Prior constructionPrior construction adoptedDecided for petitioner
“statements regarding the construction of terms. Specifically, the district court stated that “a component can be configured to operate in different roles—so long as it does not ‘simultaneously serve as more than one of: the client device, the first server/second server, and the web server.’” Ex. 1014, 10. That is, although the district court determined that a single component could not simultaneously serve more than one function at any particular time, it stated that different components could operate in different roles. Id. More particularly, in the discussion of “server” terms, the district court indicated that the function of a component, not its structure, serves to define the term. Id. at 7–10. For instance, the district court adopted the language “a device that is operating in the role of” for the term “client device.” See id. at 10. Further, the district court found that the contention “that a client device is specifically not a server—is not supported by the specification.” Ex. 1011, 11. The district court also stated that “[t]he patents do not include servers as a type of ‘communication device,’ but that is not sufficient to construe ‘client device’ as unable to act as a server in all cases.” Id. at 12 (emphasis added). We credit the district court’s interpretation of the claim terms. Accordingly, for the purposes of this decision we adopt the construction of a “client device” as “communication device that is operating in the role of a client.” Ex. 1011, 12. Additionally, we construe the term “second server” as “server that is not the client device” (id. at 14), consistent with the district court’s clarification (Ex. 1014, 8, 11).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,044,344 - PTAB · Jun 1, 2022 · IPR2022-00103 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 6–11, 13, 15, 16, and 18–23 on all asserted grounds, finding a reasonable likelihood of prevailing on anticipation and obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under factor (c) and based on the record before us, the fact that Crowds was not the basis of rejection in the prosecution of the ’342 patent nor was identified by the parties as the basis of rejection of in any of the related patents weighs strongly against exercising our discretion to deny institution under 35 U.S.C. § 325(d). See Becton, Dickinson, Paper 8 at 17; see also Kayak Software Corp. v. Int’l Bus. Machs. Corp., CBM2016-00075, Paper No. 16 at 11 (PTAB Dec. 15, 2016) (informative). As such, the record does not demonstrate the extent to which the Examiner considered Crowds alone or in combination with RFC 1122 and RFC 2616, as asserted in this Petition and applied to the challenged claims. Under factor (f), and as discussed infra at Section IV.D, Petitioner has provided sufficient evidence that Crowds discloses every limitation of the independent claim of the ’342 patent. Additionally, the examiner did not have the benefit of the claim construction of the district court, which we have adopted here (infra Section IV.B), which included broad construction of the terms “client device” and “second server.” We also determine that Crowds, asserted here, is more material than the combination of Fang and Zaid, which were the basis of a rejection in prosecution of the related ’319 patent. As Petitioner points out, the basis of the applicant’s arguments regarding the examiner’s rejection over Fang and Zaid includes that the rejection was not clear, the prior art was non-analogous, and there was improper rationale for combining the references. 6 Pet. 64–65 (citing Ex. 1018, 13, 19–22). The examiner’s basis for allowance of the claims of the ’319 patent application, while lacking specificity, does state that allowance was granted “in view of the Applicant’s arguments.” Ex. 1018, 9. Here, the applicant’s arguments, that include assertions of nonanalogous art and improper rationale to combine, with the examiner identifying applicant’s arguments as a reason for allowance, persuade us that the single reference Crowds is more material than the combination of Fang and Zaid. Or, in other words, we do not discern that the combination of Fang and Zaid is stronger prior art than Crowds.” slip op. at 11
- 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 24
- 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. 31–32 (citing Ex. 2017 ¶ 21). Patent Owner acknowledges, however, that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. at 32. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’342 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 13
- Prior constructionPrior construction adoptedDecided for petitioner
“Patent Owner has failed to consider some of the district court’s statements on the construction of terms. Specifically, the district court stated that “a component can be configured to operate in different roles—‘so long as it does not simultaneously serve as more than one of: the client device, the first server/second server, and the web server.’” Ex. 1014, 10. That is, although the district court determined that a single component could not simultaneously serve more than one function at any particular time, it stated that different components could operate in different roles. Id. More particularly, in the discussion of “server” terms, the district court indicated that the function of a component, not its structure, serves to define the term. Id. at 7–10. For instance, the district court adopted the language “a device that is operating in the role of” for the term “client device.” See id. at 10. Further, the district court found that the contention “that a client device is specifically not a server—is not supported by the specification.” Ex. 1011, 11. The district court also stated that “[t]he patents do not include servers as a type of ‘communication device,’ but that is not sufficient to construe ‘client device’ as unable to act as a server in all cases.” Id. at 12 (emphasis added). We credit the district court’s interpretation of the claim terms. Accordingly, for the purposes of this decision we adopt the construction of a “client device” as “communication device that is operating in the role of a client.” Ex. 1011, 12. Additionally, we construe the term “second server” as “server that is not the client device” (id. at 14), consistent with the district court’s clarification (Ex. 1014, 8, 11). We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. 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 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,044,342 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Apr 15, 2022 · IPR2021-00158 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–3, 5, 6, 19–21, 23, 26, 27, 30, 31, and 33 are unpatentable as obvious over Eyal and Wiser; claims 1–3 and 6 are also unpatentable over Madison and Holtz.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“I. INTRODUCTION Hulu, LLC (“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of claims 1−3, 5, 6, 19−21, 23, 26, 27, 30, 31, and 33 (“the challenged claims”) of U.S. Patent No. 9,026,673 B2 (Ex. 1001, “the ’673 patent”). Paper 2 (“Pet.”), 1. SITO Mobile R&D IP, LLC and SITO Mobile Ltd. (collectively, “Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). On April 20, 2021, we instituted the instant inter partes review as to all of the challenged claims for all of the grounds of unpatentability asserted in the Petition. Paper 9 (“Dec.”).” slip op. at 2
- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“server to validate and authenticate the user requesting the media file.” Ex. 1003 ¶¶ 150−151. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). For the foregoing reasons, we find that Petitioner has articulated an adequate reason to combine the teachings of Eyal and Wiser. 8. Conclusion on Obviousness over Eyal and Wiser” slip op. at 50
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“For the foregoing reasons, we agree with Petitioner that neither the” slip op. at 54
Patent outcomesUS 9,026,673 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,026,673 - Lyft, Inc. v. Rideshare Displays, Inc.InstitutedPTAB · Apr 11, 2022 · IPR2021-01601 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1 and 2 on all asserted grounds after finding a reasonable likelihood that Lyft would prevail on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner may refile a motion to stay after the decision on institution. Ex. 1006. However, whether the presiding judge in the Delaware Litigation would grant a stay if one were requested after institution is speculative. This factor is neutral. Factor 2 (Proximity of Trial Date) If trial in the Delaware Litigation proceeds as scheduled, in May 2023, it would occur approximately one month after the due date for the final written decision. Petitioner argues this factor favors institution. Pet. 17. Patent Owner argues that this factor is “at most” neutral. Prelim. Resp. 17. We agree with Petitioner that because the trial date and due date for the final written decision are in close proximity, this factor does not favor exercising our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“At the outset, we note that Kemler was not cited during prosecution of the ’199 patent application. See Pet. 20. Thus, for the two grounds in the Petition, relying on Kemler in combination with Kalanick or Lalancette, the combinations of references before us in this proceeding were 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 of the ’199 patent. Pet. 20. 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 id. As we will discuss in more detail infra, the Petition analyzes the challenged claims of the ’199 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); Ex. 1002, 13–14. 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 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, we have determined that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. We therefore institute trial as to all challenged claims on all grounds stated in the Petition. VI. ORDER Upon consideration of the record before us, it is: ORDERED that inter partes review of claims 1 and 2 of the ’199 patent is instituted on all grounds in the Petition;” slip op. at 45
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, a person of ordinary skill at the relevant time would have: i) at least a bachelor’s degree in electrical or computer engineering, or a similar field; ii) at least two years of experience in wireless cellular network protocols, including location and tracking/positioning, and having an understanding of signal timing and reliability issues in such wireless cellular network protocols; and iii) knowledge of issues with respect to data privacy and database storage systems. Regarding data privacy, the [person of ordinary skill] need not have extensive knowledge in, e.g. data encryption methodologies, but would have experience with data privacy policies and protection models. 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 ’199 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 ’199 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. C. Claim Construction” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,559,199 - 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
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.