• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · Mar 4, 2016 · IPR2015-01007 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not establish current network connection status.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In Ancora Techs., the Federal Circuit explained that “[t]he ordinary meaning of the word ‘program’ in the computer context encompasses both operating systems and the applications that run on them (as well as other types of computer programs)” and “‘to a computer programmer’ a program is merely a ‘set of instructions’ for a computer.” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014). Applying this guidance to the case before us, we agree with Petitioner and construe the term “process” to mean “a running instance of a computer program or application,” where a “computer program” is a set of instructions for a computer that encompasses both operating systems and the applications that run on them. We further note that the ʼ704, ʼ469, and ʼ121 patent specifications interchange the terms “process” and “processing unit.” For example, the specifications explain that a first “processing unit” is “established in the database [] as an active on-line party.” Ex. 1001, 5:29–34. The claims recite the term “process.” Accordingly, our construction is also consistent with the specifications, such that a “process” includes a “processing unit” that is running a program (operating system) or application.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19

  Patent outcomesUS 6,009,469 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,009,469
• Oxford Nanopore Technologies Ltd. v. University Of Washington And Uab Research FoundationSome claims unpatentable
  PTAB · Feb 26, 2016 · IPR2014-00513 · APJ Francisco C Prats · IPR · Final written decision

  Claim 10 is unpatentable as obvious over the ’782 patent and Butler; anticipation of claim 10 by Butler and claims 17–18 by the Wong Poster or Wong Abstract was not shown.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “substances, including ions. Ex. 1001, 8:45–49. Nonetheless, to detect an analyte, claim 1, from which claim 10 depends, requires its practitioner to compare (1) a first measured ion current obtained from the first liquid medium suspected of containing the analyte, with (2) a second measured ion current, obtained “without an analyte present,” that is, a known control containing no analyte. Id. at 103:42. As claim 1 states, the presence of the analyte is indicated by a reduction in the first measured ion current of 5% or more for at least 1.0 microsecond, as compared to the second measured ion current level without an analyte present. Id. at 103:40–44. Thus, as Patent Owner contends (PO Resp. 3–4), if the ions forming the first and second measured ion currents were considered “analytes,” the comparison required by claim 1, and its dependent claim 10, could not be performed, because removing the current-forming ions to prepare a sample “without an analyte present” (as recited in claim 1) would make it impossible to measure the ion current necessary to perform the required comparison. This conclusion is consistent with Examples 2, 3, and 6 of the ’550 patent, each of which is described as comparing ion current blockades “with and without [a]nalyte” (Ex. 1001, 41:55, 42:27, 45:49), yet each of which uses an ion-containing buffer including potassium and chloride ions to generate the measured current (id. at 41:15–16 (describing all ion conductance experiments as being performed in 1M KCl, 10 mM Hepes/KOH buffered at pH 8)). Accordingly, we conclude that, consistent with the Specification of the ’550 patent, the broadest reasonable interpretation of the term “analytes” in claim 10 encompasses only those substances detectable by measuring a reduction in ion current of 5% or more for at least 1.0 microsecond, as compared to an ion current level for the Msp without an analyte present, and does not encompass the ions forming the measured ion current, or other buffer components present in the liquid media used in the analyte detection process.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As discussed above, we agree with Patent Owner that the term “analytes” in claim 10 does not encompass the ions that produce the ion current that is measured in the claimed process. Petitioner does not dispute 9 Declaration of Steven A. Benner, Ph.D. (Declaration executed Dec. 5, 2014) (Ex. 2003; “Benner Declaration” or “Benner Decl.”). Patent Owner’s contention that the potassium ions in Butler’s experiments form the ion current that Butler measured. See Reply 1–6. Moreover, we discern no error in Patent Owner’s assertion, and supporting testimony of its witness, Dr. Benner, that Butler’s system is essentially identical to the system described in Examples 2, 3, and 6 of the ’550 patent, all of which use the potassium ions to generate the measured ion current. Accordingly, we agree with Patent Owner that the term “analytes” in claim 10 does not encompass the potassium ions in Butler’s experiments. Because Petitioner relies on the potassium ions in Butler’s experiments, along with the DNA in those experiments, as corresponding to the plurality of different analytes required by claim 10 (see Pet. 29), we agree with Patent Owner that Petitioner has not shown that Butler describes a process which includes all of the features of claim 10. We conclude, therefore, that Petitioner has not shown by a preponderance of the evidence that Butler anticipates claim 10 of the ’550 patent.” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “As provided in 37 C.F.R. § 42.23(b), a “reply may only respond to arguments raised in the corresponding opposition or patent owner response.” Thus, “a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). One indication that a new issue has been raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability of an original claim. Id. In contrast, where evidence submitted in support of a reply responded only to contentions presented in a Patent Owner response, and was not relied upon or necessary to the prima facie case of unpatentability, our reviewing court found no abuse of discretion by the Board in admitting the reply evidence. Belden Inc. v Berk-Tek LLC, 805 F.3d 1064, 1077–79 (Fed. Cir. 2015). Here, Petitioner contends that, in advancing its new contentions, its Reply merely responds to Patent Owner’s argument that the only substance in Butler’s liquid media that would be considered an analyte is the single stranded DNA tested by Butler. Reply 5, n.3; see also id. at 4 (citing Ex. 2003 ¶ 17 (Benner Decl.)). It might be true that Patent Owner’s Response argued that the DNA tested by Butler was the only analyte encompassed by claim 10. The basis for that argument, however, was Patent Owner’s response to contentions and evidence raised by Petitioner in its Petition. Specifically, Patent Owner responded that the potassium ions identified in the Petition as the second analyte were not reasonably considered “analytes” under the broadest reasonable construction of claim 10 consistent with the Specification. See PO Resp. 2–9. In its Reply, Petitioner now raises an entirely novel theory of unpatentability, a theory Patent Owner would not have addressed in its Response, as it was not raised in the Petition. We are not persuaded that presenting this novel theory of unpatentability, distinct from that originally presented in its Petition, truly responds to Patent Owner’s arguments about the reasonableness of considering potassium ions “analytes” as that term is used in claim 10. Rather, because the Reply presents new evidence in an effort to raise a new theory of anticipation, we conclude that the Reply exceeds its proper scope. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “To show that Butler anticipates claim 10, Petitioner must show that Butler discloses “every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Petitioner contends that, in addition to the dA50 molecules Butler tested, Butler also discloses two types of contaminants in its experiments that would be considered “analytes”: (1) divalent and trivalent ions, and (2) less than full-length oligonucleotides. Reply 5. Petitioner has not shown sufficiently that Butler explicitly or inherently discloses that those substances were present in the DNA experiments cited by Petitioner. As to the alleged divalent and trivalent ion impurities, Butler states only that “[i]f these hypothetical contaminant molecules are present in the dA50 aliquots that we add to the cis compartment, then we would observe the correlation between increased blockade rate and the presence of dA50.” Ex. 1003, 107 (emphasis added). Butler’s hypothetical guess at potential causes of ion current blockades does not equate to an explicit disclosure of the presence of those contaminants in its experiments. Moreover, because Butler’s disclosure, at best, suggests that such contaminants might possibly have been present, Butler does not inherently disclose the presence of those contaminants. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (“The very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.”) (emphasis added); In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).” slip op. at 17

  Patent outcomesUS 8,673,550 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,673,550
• Commerce Bancshares, Inc. / Compass Bank et al. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00801 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 26, 28, and 30–32 are unpatentable as anticipated by Aucsmith; claim 33 was not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “National Bank of Omaha, filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–33 of U.S. Patent No. 6,715,084 B2 (Ex. 1001, “the ’084 patent”). On December 1, 2014, we instituted a review (Paper 7, “Decision to Institute” or “Dec.”) based upon Petitioner’s assertion that claims 26, 28, and 30–33 are unpatentable, under 35 U.S.C. § 102(b), as anticipated by Aucsmith.1 Dec. 18. Petitioner provides a Declaration from Dr. George Kesidis (Ex. 1003), and Patent Owner provides a Declaration from Dr. David Goldschlag (Ex. 2011). This is a Final Written Decision under 35 U.S.C. § 318(a). Based on the record presented, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 26, 28, and 30–32 are unpatentable. We are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is unpatentable.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “1. “anomaly” In the Decision to Institute, we construed the term “anomaly” as “a departure from the usual or expected; an abnormality or irregularity.” Dec. 7–8. Specifically, we agreed with Patent Owner’s assertion that this is the plain meaning of the term and is consistent with the specification of the ’084 patent. Id. at 7. For example, the ’084 patent states that “[a]nomaly detection systems look for statistically anomalous behavior . . . [s]tatistical scenarios can be implemented for user, dataset, and program usage to detect ‘exceptional’ use of the system.” Id. at 8 (citing Ex. 1001, 3:54–57). Neither party contests this construction. We discern no reason to deviate from this construction of “anomaly.”” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “evidence that Aucsmith discloses the detecting limitation as required. First, we are persuaded that the indirect detecting method of Aucsmith satisfies the detecting limitation. Aucsmith discloses that “server 104 can also use the possible security problems reported by all of the agents 106(1)–106(N) to help detect intrusion patterns, new intrusion techniques, and other security problems.” Ex. 1004 ¶ 13. As discussed, although we agree that server 104, using this method, is analyzing reports of “possible security problems” created by distributed agents, we are persuaded that this is within the scope of the claim because the reports include data entering the network. For example, Aucsmith discloses that “server 104 receives notice of the anomaly and can examine the anomaly,” and “[i]n individually examining the anomaly [reported by agent 106], the server 104, may, for example, search for particular information in the anomaly such as a network address previously noted as a security problem . . . .” Ex. 1004 ¶¶ 43, 45; see also id. ¶ 44 (“[S]erver 104 may examine the anomaly in conjunction with other information accessible by the server 104, e.g., information included in the collection of security data 118, information sent to the server 104 from other sources, information accessible to the server 104 through the network 108 and/or the corporate server 116, and other similar types of information.”). We are persuaded that Aucsmith discloses server 104 analyzing data entering the network, although this data may also have been analyzed previously by the distributed agents.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Patent Owner that Petitioner does not provide sufficient evidence that Aucsmith discloses “adjusting anomaly detection sensitivity and alarm thresholds” sufficient to show anticipation. Dr. Kesidis’s testimony just repeats the language from Aucsmith quoted above and concludes that “Aucsmith discloses each and every limitation of claim 33.” Ex. 1003 ¶¶ 178–81. Dr. Kesidis, however, does not explain why a person of ordinary skill would understand “modifying security procedures” to disclose “adjusts anomaly detection sensitivity and alarm thresholds.” Id. Dr. Goldschlag, on the other hand, states that “[o]ne of ordinary skill in the art would not have understood this term to disclose adjusting either anomaly detection sensitivity or alarm thresholds.” Ex. 2011 ¶ 62 (emphasis added). Thus, we are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is anticipated by Aucsmith.” slip op. at 22

  Patent outcomesUS 6,715,084 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,715,084
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner

    “Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24

  Patent outcomesUS 6,163,775 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,163,775
• Facebook, Inc. / Linkedin Corp. et al. v. Software Rights Archive, LLCSome claims unpatentable
  PTAB · Jan 30, 2015 · IPR2013-00480 · APJ Barbara A Parvis · IPR · Final written decision

  Claim 14 was held unpatentable as anticipated by Fox Thesis; claims 1, 5, 15, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “determine whether “cluster links” means relationships between two nodes, which are represented in data stored in a computer. Claim 1 recites a method of analyzing data in a database with indirect relationships using links and nodes. Claim 14 similarly recites a method for representing the relationship between nodes, using stored direct links, paths, and candidate cluster links. As explained in the ’494 Patent specification, data in the database may be represented as a node. Ex. 1001, 12:29–33. Exemplary nodes include an object or a portion of an object, a document or section of a document, and a World Wide Web page. Id. at 12:35–38. The ’494 Patent specification states that a link is a “relationship between two nodes.” Id. at 12:65–66. The ’494 Patent specification continues, “[a] link [] can be represented by a vector or an entry on a table and contain information for example, a from-node identification [] (ID), a to-node ID [], a link type [], and a weight.” Id. at 13:3–6. As described in the ’494 Patent specification, a link is represented in data stored in a computer. We, therefore, determine that “cluster links” means relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As described in Fox SMART, the concentration tests that are cited by Petitioner are performed as part of forming the cluster tree. Id. Petitioner does not identify disclosure in Fox SMART of deleting clusters other than those that simply overlap, or duplicate, other clusters. Overlapping clusters are deleted following a routine that identifies plausible clustering with “no limit on overlap.” Id. Additionally, Fox SMART includes code that collects orphans. Id. at 52. Petitioner, however, has not shown that Fox SMART describes a subset which does not include these orphans. Dr. Fox’s supplemental testimony that “Fox SMART teaches that potential (i.e., candidate) clusters are rejected (‘deleted’) if they fail any one of these tests” (Ex. 1028 ¶ 281 (citing Ex. 1005, 51)) suggests that the terms “rejected” and “deleted” are the same. We do not agree. In view of Dr. Fox’s testimony in both of his Declarations and the testimony of Dr. Jacobs, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing deleting overlap that had been generated by the immediately preceding software routine. Additionally, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing that the tests referred to by Dr. Fox are processed during formation of the tree. We, therefore, determine that Dr. Fox’s testimony does not address persuasively the requirement in claim 1 of deriving a subset of the already generated candidate cluster links.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “FURTHER ORDERED that Patent Owner’s Motion to Amend to cancel claims 8, 10, 11, 35, and 40 of the ’494 Patent is GRANTED;” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “arguments for the first time. Paper 44, 1. A reply may respond to arguments raised in the corresponding patent owner response. 37 C.F.R. § 42.23(a). Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the unpatentability of a claim. Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,767 (Aug. 14, 2012). We determine that the evidence presented in the Reply Fox Declaration that is discussed in this Decision properly responds to arguments raised in the Patent Owner Response. Additionally, we do not rely on evidence in the Reply Fox Declaration in our determination that Petitioner established by a preponderance of the evidence that claim 14 is unpatentable. For the reasons given, we deny Patent Owner’s Motion to Exclude.” slip op. at 22

  Patent outcomesUS 5,832,494 mixed
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 5,832,494
• CB Distributors, Inc. / Dr Distributors, LLC v. Fontem Holdings 1 B.V.Some claims unpatentable
  PTAB · Dec 24, 2014 · IPR2013-00387 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1–10, 12, 15–26, and 33–38 are unpatentable: claims 1, 2, 5–8, 10, 33, 35, 37, and 38 as anticipated by Liu; the specified remaining claims as obvious over Hon ’494 and Liu.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–12, 15–26, and 33–41 of U.S. Patent No. 8,156,944 B2 (Ex. 1001) (“the ’944 patent”). The previous Patent Owner, Ruyan Investment (Holdings) Limited,1 did not file a preliminary response. We determined that the information presented in the Petition demonstrated that there was a reasonable likelihood that Petitioner would prevail in challenging claims 1–12, 15–26, and 33–38, but not claims 39–41, of the ’944 patent, as unpatentable under 35 U.S.C. § 102 or § 103, or both. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on December 30, 2013, to review whether claims 1–12, 15–26, and 33–38 are unpatentable on the following grounds. Reference(s) Basis Claims Challenged Liu (Ex. 1019)2 § 102 1, 2, 5–8, 10, 33, 35, 37, and 38 Hon ’494 (Exs. 1008/1009)3 § 103 1–4, 8–12, 15–26, 33, 34, 36, and 38” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We decline, however, to read limitations that are not recited into the claims. While we read claims in view of the Specification, we do not read limitations from embodiments in the Specification into the claims. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir 2014) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). Our reviewing court “has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Hill-Rom Servs., 755 F.3d at 1371–72 (quoting Liebel-Flarsheim, 358 F.3d at 906).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “At least one dictionary definition provided by Patent Owner mirrors the dictionary definition cited in our Decision to Institute. Dec. to Inst. 11 (citing Random House Webster’s College Dictionary 1051 (1995) (defining “porous” as “permeable by water, air, etc.” or “full of pores”)). Exhibit B attached to Mr. Sheehan’s Declaration provides several definitions for “porous” as presented in the Free Online Dictionary (http://www.thefreedictionary.com/porous). That dictionary defines “porous” to mean, among other definitions, “having pores,” “[a]dmitting the passage of gas or liquid through pores or interstices,” or “permeable to water, air, or other fluids.” Ex. 2001, Ex. B. The other dictionary cited by Mr. Sheehan provides definitions for “porous” that include “containing minute interstices through which water, air, etc., may pass.” Id. at Ex. C (providing an on-line Oxford English Dictionary). While both dictionaries define “porous” to include the definition of “full of pores,” both dictionaries also include less limiting definitions. Id. at Exs. B, C. We do not agree with Patent Owner or Mr. Sheehan that the broadest reasonable construction of “porous” is limited to “full of pores or interstices into which liquid or gas is absorbed or defused.” PO Resp. 26; Ex. 2001 ¶ 29. Rather, as discussed in our Decision to Institute, we interpret “porous,” consistent with its ordinary meaning and how it is used the Specification, to refer to a component that includes pores and is permeable to liquid, i.e., admits passage of air or liquid through pores or interstices. Dec. to Inst. 11. A component that includes such pores has the ability to “absorb” liquid in the pores, consistent with disclosures in the Specification, regardless of whether the porous component has a few pores or is full of pores, such as in the case of a foam. Ex. 1001, 6:30–34; 7:3–7.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “narrowly as Patent Owner suggests. Rather, we consider whether Liu describes (i) an atomizing chamber that runs through, i.e., inside and along the length of, the atomizer and its electric heating rod, such that (ii) atomization occurs along (i.e., runs through), the length of the chamber. Petitioner has established by a preponderance of the evidence that Figure 2 of Liu depicts (i) an atomizing chamber inside heater housing 24 that runs through, i.e., inside and along the length of, heater housing 24 and its electric heating rod (i.e., rod and heater wire 26). Pet. 18–20, 24, 28 (citing Ex. 1019, Figs. 2, 5, 6:18–22, 7:16–19, 9:19–20). Petitioner also establishes that Liu describes (ii) atomization occurring along the length of the chamber inside heater housing 24. Contrary to Patent Owner’s assertion, it does not matter to our analysis that the upstream end of heater housing 24 in Liu is not “unblocked,” and it does not matter whether apertures 28 are “small.” Rather, we consider whether apertures in heater housing 24 in Liu allow liquid to come into the chamber such that atomization occurs along the length of the chamber, as required by claims 1 and 10.” slip op. at 19

  Patent outcomesUS 8,156,944 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,156,944

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