- PTAB · Apr 17, 2024 · IPR2024-00005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 9 and 19 on all asserted grounds, finding a reasonable likelihood that Gowanlock 2 combined with Swivelpole renders at least one challenged claim unpatentable.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“District Court proceeding, and restate those positions here. See Pet. 20–21 (citing Ex. 1057, Ex. 1058); Prelim. Resp. 5. Both parties agree, however, that construction of “mounting pole” is not necessary in this proceeding. Pet. 21; Prelim. Resp. 5. Accordingly, we need not construe this term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in petroleum engineering, mechanical engineering, civil engineering, construction, architecture, or a similar degree with a year or more experience working on or around rigs, such as a drilling rig, where one or more lighting systems were used to illuminate the wellsite.” Pet. 18 (citing Ex. 1008 ¶¶ 39–40). Petitioner further argues that “[a]dditional practical experience would substitute for lack of a formal degree.” Id. (citing Ex. 1008 ¶ 41). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’626 patent and the asserted prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“As to motivation to combine the references, we find that Petitioner sufficiently demonstrates a rational basis for a person of ordinary skill in the art to combine the teachings of Gowanlock 2 and Swivelpole. See Pet. 43– 51; Ex. 1008 ¶¶ 89–96. Patent Owner’s argument that the combination “goes against the fundamental teachings of both references, neither of which disclose a crown deck” (Prelim. Resp. 50) is not persuasive, because as discussed above, Petitioner has sufficiently shown that Gowanlock 2 discloses a crown deck. We do not agree that Swivelpole’s disclosure is limited to a lighting system for illuminating the area immediately beneath the light, and nothing beyond its adjacent walkway. See id. at 50–51. For example, Swivelpole’s description of its S3 system also states it is ideal for lighting roof tops. Ex. 1004, 9. Because Patent Owner’s argument does not reasonably credit the ability of a person of ordinary skill in the art to interpret Swivelpole’s disclosure as a whole, we do not find it persuasive.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We find that Petitioner has demonstrated a material error by the Office in failing to consider the teachings of the prior art of record. Under the second prong of Advanced Bionics, we consider “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton, Dickinson, 17. Here, Petitioner has shown that during prosecution of the ’626 patent, the Examiner immediately allowed claims 21–33 and 35–39 of the application without rejection, in the first office action dated November 25, 2020. Ex. 1002, 34–35. The reasons for allowance set forth in the office action merely recite the limitations of claims 21 and 31, and state “the references of the Prior Art of record fail to teach or suggest the combination of the limitations as set forth in claim [21 and 31].” Id. Upon issuance, claims 21 and 31 became claims 9 and 19 of the ’626 patent, respectively. In view of the Examiner’s statement in the reasons for allowance of claims 9 and 19, we determine the Examiner erred by failing to consider the prior art of record. As discussed above with regard to the patentability challenges to claims 9 and 19 (see Section II.D.4), we find that Petitioner has sufficiently shown a reasonable likelihood that the combination of Gowanlock 2 and Swivelpole discloses the subject matter found allowable by the Examiner. Accordingly, we are persuaded that the Examiner erred in a manner material to patentability by overlooking the teachings of Gowanlock 2 and Swivelpole. Conclusion For the foregoing reasons, we decline to exercise discretion to deny institution under § 325(d). IV.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,900,626 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2022-01535 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Sourcefire.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). or implicitly in market forces; design incentives; the “‘interrelated teachings of multiple patents’”; “‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)). In determining whether a claim would have been obvious in light of the prior art, when in evidence, we consider any relevant objective evidence of non-obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of non-obviousness, may lead to a conclusion that the challenged claims would not have been obvious to one of ordinary skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Patent Owner does not present evidence of such objective considerations.4 We analyze the asserted grounds of unpatentability in accordance with these principles to determine whether Petitioner has met its burden to establish unpatentability of the challenged claims by a preponderance of the evidence.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Responsive to Patent Owner proposed that, applying the plain and ordinary meaning, we construe “responsive to” to require that the claimed applying and communicating steps “must be performed based on a packet satisfying a packet-filtering rule based on network-threat indicators.” PO Resp. 6. According to Patent Owner: the “responsive to language” of the claims establishes a relationship between (i) a packet satisfying a packet filtering rule based on one or more network-threat indicators and (ii) the subsequent application of an operator that allows the packet to continue and communication of information indicating the packet was allowed to continue. Id. at 7. “Petitioner agrees that ‘responsive to’ in the claims requires that the applying and communicating steps must occur responsive to a determination extent, we do not perceive a dispute between the parties concerning the construction of “responsive to” and we apply the term’s plain and ordinary meaning, i.e., that steps recited in the claim as being performed “responsive to” a determination, e.g., “applying an operator,” are performed after the relevant determination is made.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“[u]nless the packet’s contents match the keywords of the intrusion rule, the 3D Sensor does not trigger the intrusions rule’s action (e.g., alert, drop) or generate an intrusion event.” PO Resp. 15 (citing Ex. 1004, 404–405, 761– 762, 769–770, 776–777; Ex. 2004, Goodrich Decl. ¶ 56). According to Patent Owner, a Sourcefire packet can match the IP address in a rule header but, if packet contents do not match specified keywords and argument to generate an intrusion event, a rule is not triggered. Id. (citing Ex. 1004, 404–405, 761–762, 766–767, 769–770, 776–777). At the oral hearing Patent Owner argued: So there is no disclosure in Sourcefire that you would trigger a rule responsive to satisfying that rule based on network threat-indicators. As alluded to earlier on page 16 of the demonstratives, Sourcefire tells you what the intrusion rule is. It is a specified set of key words and arguments. It is not the rule header. The rule header is only used to determine whether or not a particular rule will be applied to network traffic. You know, neither of these issues were before the Board or decided in the earlier case. slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Sourcefire. The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). or implicitly in market forces; design incentives; the “‘interrelated teachings of multiple patents’”; “‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)). In determining whether a claim would have been obvious in light of the prior art, when in evidence, we consider any relevant objective evidence of non-obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of non-obviousness, may lead to a conclusion that the challenged claims would not have been obvious to one of ordinary skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Patent Owner does not present evidence of such objective considerations.4” slip op. at 12
Patent outcomesUS 10,609,062 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,609,062 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2022-01607 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Roese, Golnabi, Huima, and Hayter; claims 3, 11, and 19 are also obvious over those references with Esbensen.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party defending against preclusion] had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (holding that issue preclusion applies in the administrative context).” slip op. at 10
- Skill levelSkill level board ownOther
“Petitioner contends that in the 01454 FWD, the Board found that “a person of ordinary skill in the relevant art in January 2013 would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 6 (citing 01454 FWD, 5). Petitioner asserts that the same level of ordinary skill in the art should apply in this proceeding. Id. (citing Ex. 1003 ¶ 37). Patent Owner also adopts the level of ordinary skill in the art from the 01454 FWD. PO Resp. 8–9 (citing 01454 FWD, 5). For purposes of this Decision, we find no reason to deviate from the Board’s previous determination and, therefore, adopt the undisputed level of ordinary skill in the art previously found by the Board in the 01454 FWD.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Second, Patent Owner argues that the challenged claims require “the caching of entire packets, not just the relevant portion of every incoming packet.” PO Resp. 11 (citing Ex. 2005 ¶ 43). Patent Owner’s declarant states that “[a] POSITA would understand that because the term packet is used to describe both the unit of data received at the network device and the unit of data that is cached, the Challenged Claims require caching the entirety of the packet received at the network device, which generally includes both header and payload data.” Ex. 2005 ¶ 43 (citing Ex. 2008, 385). We generally agree with Patent Owner’s position, that one of ordinary skill in the art would consider that caching of a packet would include caching the entire packet. We also presume that the caching of only relevant portions of a packet could be construed as caching a packet in the context of monitoring packets passing through a network device, for example, but we are persuaded that the intent of the independent claims is to cache the packets that have yet to be processed when a swapping of rule sets has been instigated, such that those packets, i.e., entire packets, can be processed under the new rule set. As such, we agree with Patent Owner that persons of ordinary skill in the art would have understood “caching the one or more packets” to mean “caching the one or more entire packets.” the claim limitation of “caching the one or more packets” to mean “caching one or more entire packets,” in the context of the ’572 Patent. As discussed in the Decision to Institute, it remains unclear what Patent Owner means by “full versions of the packets,” such that we are not persuaded that such terminology should be introduced into the construction. See Dec. to Inst. 8, 21.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. As discussed above, we are persuaded that Roese teaches that when the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 47 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 48–49 (citing Ex. 1007 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶ 176). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets” slip op. at 22
Patent outcomesUS 10,511,572 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,511,572 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Apr 15, 2024 · IPR2022-01525 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–4, 6–14, and 16–20 are anticipated by IPUG; claims 5 and 15 are obvious over IPUG; additional Altman-based grounds also apply.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Claim 1 recites that, based on comparing flow identification data with a list of identification data, a packet associated with a match is decrypted and a “corresponding action” is taken on the decrypted packet associated a result of a match, the claim does not limit the action itself, i.e., any action is a “corresponding action” as long as that action is “associated with the match [of the] data on the list.” Id. at 18:13–16. Both parties agree that the examples of such actions in the Specification are exemplary and not limiting. See, e.g., PO Resp. 11 (“[Patent Owner] did not (and does not) attempt to limit the ‘corresponding action’ to any particular action or actions.”). The ’526 patent explicitly describes “blocking” a communication as an “action.” Id. at 6:61–66. As “allowing” a packet is the opposite of “blocking” a packet, in the context of the ’526 patent, “allowing” a packet also constitutes an “action.” Nevertheless, Patent Owner attempts to exclude allowing a packet from the scope of the claimed corresponding action by arguing that the differentiation between claim elements requires construing “performing a corresponding action” to mean more than simply allowing the packets. PO Resp. 10–11 (citing Prelim. Resp. 2, 23–24); PO Sur-reply 5–7. Patent Owner states that other claim limitations, e.g., “comparing the identified flow data with the list of the identification data” (step 1[e]), are recited separately from “performing a corresponding action on each packet of the encrypted communication flow associated with the match data on the list.” PO Sur-reply 7. Patent Owner argues that, for this reason, a construction of “performing a corresponding action” in step 1[f] that does not require some action, other than re-encrypting and transmitting the packets, renders the limitations superfluous. Id. (arguing that different claim terms are presumed to have different scope, citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000)). result. In the ’526 patent claims, the action taken on a packet in step 1[f], e.g., blocking or allowing and logging a communication as discussed in the patent, or merely allowing a communication (the opposite of blocking a communication), is an action on a decrypted packet that corresponds to a “packet of the encrypted communication flow associated with the match with data of the list” (step 1[e]). As Patent Owner acknowledges, the claims do not limit those actions. Thus, the comparing of step 1[e] and the action of allowing the transmission taken in step 1[f] are of different scope. Similarly (and consistent with Patent Owner’s analysis), the further steps of re-encrypting and transmitting the packet in step 1[g] are taken “after performing the corresponding action,” e.g., after allowing the packet, and are presumed to be of different scope from the allowing action in step 1[f]. Ex. 1001, 18:17. Re-encrypting and transmitting a packet that was previously decrypted as matched against flow identification criteria and determined to meet criteria allowing the packet to be transmitted without some other action, are not superfluous steps. Thus, as used in the claims of the ’526 patent, we determine that a “corresponding action” includes any action, including the action of allowing a further transmission of a packet, without further action.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Patent Owner’s emphasis on indexing is misplaced. In Acceleration Bay, the court affirmed the Board’s findings that the subject reference (Lin) was not meaningfully indexed because the website allowed a user to view a list of technical reports indexed only by author or year and its advanced search form was not reliable. Acceleration Bay, 908 F.3d at 773–74. In Blue Calypso, the court noted that there was no evidence a party could navigate from a university’s website concerning common subject matter to the reference itself, i.e., the personal webpage of Ratsimor. Blue Calypso, 815 F.3d at 1350. The facts of Acceleration Bay and Blue Calypso are distinguished from the present circumstances where Cisco’s networking products were well known to persons of ordinary skill and the reference is a page on Cisco’s own website. Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012). In Voter Verified, the court addressed an article (Benson) posted to an on-line publication (Risks Digest) concerning the claimed subject matter (risks of computer automation), noting that Risks Digest was a prominent forum for discussing such technologies (over 100 articles relating to electronic on-line voting). Voter Verified¸ 698 F.3d at 1380–81. The article’s publication on a site interested persons of ordinary skill would have recognized as important “overcame the absence of evidence that the website at which the article was located was indexed and thereby findable by an internet search engine.” See Blue Calypso, 815 F.3d at 1349 (discussing Voter Verified); Voter Verified¸ 698 F.3d at 1380–81. In Voter Verified the court stated: The Risks Digest website was undisputedly open to any internet user by the critical date. Whether or not the website itself had been indexed by 1999 (through search engines or otherwise), the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. And upon accessing the Risks Digest website, such an interested researcher would have found the Benson article using that website’s own search functions and applying reasonable diligence. In short, the Benson article was publicly available by the critical date and therefore qualifies as a prior art “printed publication” under § 102(b). Voter Verified, 698 F.3d at 1381. Dr. Prakash testified that a person of ordinary skill would have looked for product manuals and product descriptions concerning the relevant subject matter from other vendors in addition to Cisco, including BlueCoat, Sophos, Trend Micro, and Palo Alto Networks. Ex. 1002, Prakash Decl. ¶ 129. Guide provides instructions for setting up, administering, and monitoring the IronPort Web Security appliance.” Ex. 1008, 27. Where a document’s “purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.” Valve, 8 F.4th at 1374 (quoting Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014)). The IPUG document bears the date of November, 2010, on its title page, as well as a copyright date of 2010. Ex. 1008, 1–2; Ex. 1010, 18–19. Although Patent Owner argues the copyright date on the document is hearsay, we do not rely solely on the reference’s copyright notice. The Wayback Machine indicates IPUG was archived before the July 24, 2017 filing date of the provisional application from which the ’526 patent claims priority. Ex. 1001 (code 60), 1:6–9; Ex. 1010, Frank-White Decl. (Ex. A), 5 (Wayback Archive Page of Dec. 29, 2103 identifying IPUG as available on Cisco’s website as of Dec. 29, 2013), 6, 8 (Wayback Archive Page listing IPUG available on Cisco’s website on March 1, 2017), 11–12 (Wayback Archive Page of March 9, 2010 identifying IPUG product).” slip op. at 20
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“Patent Owner’s argument that the NMC drops the traffic after analysis and never re-encrypts is unavailing, as further evidenced by Dr. Goodrich’s deposition testimony. Altman’s NMC does not function to re-encrypt and transmit traffic, but instead uses unencrypted data from the SIA to determine whether to instruct the SIA, which functions as the Man-In-The-Middle, to block or re-encrypt and transmit packets. See Ex. 1005 ¶¶ 31–33; Ex. 1014, Goodrich Tr. 42:18–22 (agreeing that Altman does not describe the NMC itself as accepting or processing encrypted communications), 38:12–15 (agreeing that the SIA responds to instructions from the NMC). sufficiently that Altman at least suggests re-encrypting the decrypted traffic after performing the corresponding action as recited in claim limitations 1[f] and 1[g]. Dec. to Inst. 49–50. As discussed below, having reviewed the arguments and evidence of record, we are also persuaded that a skilled artisan would reasonably understand or infer limitation 1[g] from Altman’s disclosure. See Dayco Prods., 329 F.3d at 1368 (stating that “the dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim element was disclosed in that single reference”). Patent Owner’s citation to Exhibit 1007 (Netronome) as “showing a similar out-of-band9 analysis” informs our understanding of what a person of ordinary skill would reasonably understand or infer from Altman. PO Resp. 47; Ex. 1005 ¶ 12. Netronome, incorporated into Altman by reference, discloses an embodiment for plaintext inspection of SSL-encrypted flows, using a proxy to examine and inspect the SSL-encrypted content before entering or exiting an enterprise. Ex. 1007, 2; Ex. 1005 ¶ 12. In one Netronome embodiment, each individual session terminates on the SSL inspector, but TCP connections are retained end-to-end. Ex. 1007, 6. Terminating and re-originating SSL allows the appliance to obtain plaintext in the encrypted signal that is sent to an adjacent security appliance in a regenerated TCP stream; the data remains encrypted on both the connection 9 Neither the ’526 patent nor Altman uses the term “out of band.” Ex. 1014, Goodrich Tr. 35:19–25. As to Altman, Dr. Goodrich appears to be referring to copies of data flows decrypted by the SIA and received by the NMC as “out of band” content. Id. at 46:11–16 (noting that the NMC is never disclosed as processing flows where it would be sending packets back to a destination); see also id. at 36:3–22. server. Ex. 1007, 6. Petitioner’s Altman-based challenges do not rely on Netronome,” slip op. at 56
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The Petition asserts that IPUG discloses elements 1[f] and 1[g] because IPUG discloses that when encrypted data in an HTTPS connection are received, the appliance (1) decrypts the received encrypted data, if the URL category (the claimed “identified flow identification data”) matches the data in the Decryption Policies, (2) applies the Access Policies to the decrypted plaintext traffic, (3) if the Access Policies allow the traffic, intended destination. Pet. 23–24 (citing Ex. 1008, 257, 268–69; Ex. 1002 ¶¶ 224–229, 232–233).” slip op. at 29
Patent outcomesUS 10,284,526 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,284,526 - PTAB · Mar 14, 2024 · IPR2024-00366 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on all petition grounds: claims 1–11 over Amanatides and Kohn, and claim 2 over Selzer and Fiske, based on a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and in the Realtek IPR, we institute inter partes review.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Reasons to Combine the Teachings of Lindholm ’685 and Lindholm ’913 Noting that Lindholm ’685 and Lindholm ’913 are both directed to a multithreaded shader and much of their Specifications and figures are the same, in the Realtek IPR Petitioner contends that a person of ordinary skill would have recognized the Lindholm references disclose different details of the same unified shader architecture. Realtek IPR Pet. 21–22. In the Realtek IPR, Petitioner also states that an ordinarily skilled artisan would have looked to the additional disclosure in Lindholm ’913 for additional details about scheduling threads for execution independent of other threads. Id. at 22. In the Realtek IPR, we agreed that a person of ordinary skill would have had reason to combine the teachings of the Lindholm references. We apply the same reasoning to this Decision do not repeat that analysis here.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable
“Analysis in the Realtek IPR In the Realtek IPR we were persuaded that Patent Owner antedated the Lindholm references and therefore they are not prior art. Therefore, in this proceeding we are not persuaded that Petitioner will succeed on its challenge based on the Lindholm references. Realtek IPR Dec. to Inst. 23– 41. We apply the same reasoning in this Decision and do not repeat our analysis here. In the Realtek IPR, we also noted that if the Lindholm references were considered applicable prior art, we are persuaded that Petitioner has cited sufficient evidence to demonstrate that a person of ordinary skill would have been motivated to combine the teachings of Lindholm ’685 and Lindholm ’913, and that in combination, the references would have taught, or at least suggested, all the limitations of claims 1–11 to a person of ordinary skill in the art. We apply the same reasoning to this Decisions and do not repeat that analysis here. Id.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,760,454 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 12, 2024 · IPR2023-01100 · APJ William V Saindon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 29 or 30 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Burdens of Proof “In an IPR, 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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). At the institution phase of an inter partes review, Petitioner’s burden is to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“order to vary the amount of power delivered. In particular, the various taps to the coil are activated by FET switches 21, 22, and 23. Ex. 1005 ¶¶ 40, 51. Petitioner proposes to modify the coils of Okada to be planar, as taught in Odendaal (and Shima). Pet. 14–24. Although Petitioner characterizes this as using “known technologies/techniques” which “yield [a] predictable result” (id. at 20), Petitioner has not shown this to be the case. Notably, Petitioner does not assert that Odendaal and/or Shima use multi-tapped planar coils. Adding the teachings of these references to create a multi-tapped planar coil results in a new arrangement not shown in the art presented in this record. Petitioner’s proposed combination does not “unite[] old elements with no change in their respective functions” or “simply arrange[] old elements with each performing the same function it had been known to perform.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–417 (2007) (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152–153 (1950) and Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Petitioner’s unsupported assertion that the combination uses “known technologies/techniques,” therefore, is insufficiently persuasive for purposes of institution.” slip op. at 16
§ 103 obviousnesscites KSRPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 12, 2024 · IPR2023-01097 · APJ William V Saindon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 28 or 29 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons expressed above, we determine that Petitioner has not demonstrated a reasonable likelihood of success in showing that the subject matter of claim 28 would have been obvious to a person of ordinary skill in the art. Claim 29 depends from claim 28, and Petitioner relies on the same combination of Okada and Odendaal. See generally Pet. 65–72. Accordingly, the same reasons as claim 28, Petitioner has not demonstrated a reasonable likelihood of success for claim 29. III. CONCLUSION For the reasons given above, we find that Petitioner has not established a reasonable likelihood of success in showing that any challenged claim is obvious in view of the grounds presented in the Petition.2 Accordingly, we do not institute inter partes review. 35 U.S.C. § 314(a).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“order to vary the amount of power delivered. In particular, the various taps to the coil are activated by FET switches 21, 22, and 23. Ex. 1005 ¶¶ 40, 51. Petitioner proposes to modify the coils of Okada to be planar, as taught in Odendaal (and Shima). Pet. 14–24. Although Petitioner characterizes this as using “known technologies/techniques” which “yield [a] predictable result” (id. at 20), Petitioner has not shown this to be the case. Notably, Petitioner does not assert that Odendaal and/or Shima use multi-tapped planar coils. Adding the teachings of these references to create a multi-tapped planar coil results in a new arrangement not shown in the art presented in this record. Petitioner’s proposed combination does not “unite[] old elements with no change in their respective functions” or “simply arrange[] old elements with each performing the same function it had been known to perform.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–417 (2007) (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152–153 (1950) and Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Petitioner’s unsupported assertion that the combination uses “known technologies/techniques,” therefore, is insufficiently persuasive for purposes of institution. To the extent Petitioner is implying that this new arrangement is nevertheless predictable or has a reasonable likelihood of success (see, e.g., Pet. 20), Petitioner provides insufficient evidence to support that assertion. Petitioner’s expert discusses the proposed combination in his declaration, but does not address the fact that Okada uses a multi-tapped coil. See generally Ex. 1002 ¶¶ 115–120. Petitioner (and its expert) cannot persuasively assert predictability for an arrangement they have not discussed.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“We are cognizant of the Federal Circuit’s instruction that “the inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue.” Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957 (Fed. Cir. 2023). First, we note that our Decision here, unlike in Axonics, is not a determination on patentability, but rather a determination of whether we institute an inter partes review. Thus, we consider here the likelihood of success for a position that lacks explanation and evidence. Second, our analysis properly focuses on whether a person of ordinary skill in the art would have combined elements from specific references to arrive at the claimed invention (which has planar coils). We determine that it does not because, for the reasons explained above, Petitioner provides no reason (beyond hindsight) explaining why a person of ordinary skill in the art would have made a combination to include planar coils that appears unworkable and mixes incompatible features of the two different coil arrangements without sufficient explanation to justify their combination.” slip op. at 18
§ 103 obviousnesscites KSRPatents in suitUS 11,316,371 - Samsung Electronics Co., Ltd v. Mojo Mobility Inc.Institution deniedPTAB · Feb 9, 2024 · IPR2023-01124 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on claims 6, 9, 10, and 13 under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal. 4. Conclusion Claims 6, 9, 10, and 13 all depend from claim 1. In view of our determination concerning claim 1, we determine that the Petition has not put forth compelling evidence of unpatentability of claims 6, 9, 10, and 13 for the same reasons. We therefore decline to institute inter partes review of claims 1, 6, 9, 10, and 13.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, in utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how Odendaal’s planar could would be incorporated to provide this functionality of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 9, 2024 · IPR2023-01098 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 1, 2, 5, 8, and 12, finding the Fintiv factors favored denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Patent Owner’s analysis based on the schedule in the district court’s docket control order. Ex. 2007. The fact that the time-to-trial statistics cited by Petitioner predict that a trial in May 2024 (Pet. 89), a date even earlier than the trial date set in the court’s docket control order, confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 89. As the Texas Litigation is scheduled to go to trial in August 2024, approximately six months before a final written decision would be entered, we determine that Factor 2 weighs in favor of discretionary denial.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002, Declaration of Dr. R. Jacob Baker (“Baker Decl.”) ¶¶ 20–21). Petitioner further states that slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 9, 2024 · IPR2023-01095 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Samsung did not show a reasonable likelihood of proving claims 9, 10, 15, and 16 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal. 4. Conclusion Claims 9, 10, 15, and 16 all depend from claim 1. In view of our determination concerning claim 1, we determine that Petitioner has not demonstrated a reasonable likelihood it will prevail in its challenge to claims 9, 10, 15, and 16. Therefore, we decline to institute inter partes review of claims 9, 10, 15, and 16.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Although Okada is premised on a multi-section primary coil (see Prelim. Resp. 35–41), the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil create multiple sections and access those sections. See Pet. 13– 17. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil of the primary and secondary sections of the coil. See Prelim. Resp. 36–37. The Petition does not address how Odendaal’s planar coil would be incorporated to provide this functionality of Okada. On this record, it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015-00273 Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentable
“Prelim. Resp. 35–41), the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil create multiple sections and access those sections. See Pet. 13– 17. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil of the primary and secondary sections of the coil. See Prelim. Resp. 36–37. The Petition does not address how Odendaal’s planar coil would be incorporated to provide this functionality of Okada. On this record, it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015-00273 Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,316,371
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.