• Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.

  RulingsFinal written decision

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

    “(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19

  Patent outcomesUS 8,967,844 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,967,844
• Bose Corporation v. Freebit AsAll claims unpatentable
  PTAB · Apr 18, 2018 · IPR2017-00129 · APJ David C Mckone · IPR · Final written decision

  Claims 1–5 and 7–10 are unpatentable as obvious over Berg, Varming, and Aber; claim 6 is unpatentable as obvious over those references and Marshall.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner’s theory of obviousness, however, is that the prior art renders the challenged claims obvious even under Patent Owner’s narrower constructions. Pet. 1; Reply 4. For example, Petitioner argues: What they are saying is that the curvature, this new curvature that they have put into that C-shaped pad has to itself engage and fit closely, in other words touch the concha of the ear. We think that this is a narrow interpretation. When you look at the claim language, we are not really seeing support, Your Honor, for that particular narrow construction. And yet, what we are saying is that nonetheless, if we were to adopt that narrow construction, the prior art renders it obvious. Tr. 7:8–15. Petitioner does not have a theory of obviousness under broader constructions, should we find that the challenged claims are not rendered obvious under Patent Owner’s proposed constructions. Reply 4; Tr. 7:16– 9:2. Accordingly, we evaluate Petitioner’s allegations under Patent Owner’s proposed constructions, and need not determine whether the proper constructions should be broader to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner disagrees with Petitioner and argues that a skilled artisan would have had “a bachelor’s degree or master’s degree in audiology or hearing science and at least three years of experience with developing earphone and hearing instrument products.” PO Resp. 20. We do not discern a meaningful difference between the parties’ proposals, and the parties do not contend that any such difference has an impact on this proceeding. In any case, our findings and conclusions are the same under either party’s proposed level of skill.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “background discussion and the description of its own invention, we are not persuaded that Varming’s discussion of Berg’s interference with the crus of helix refers to interference at the front of the ear. Rather, Varming clearly describes a device that protrudes into the void or cavity at the front of the ear, a fact that undermines Patent Owner’s argument and the testimony of Dr. Staab. Petitioner characterizes Varming’s background as identifying a problem in Mauney and Feldman (blocked ear canal) that Berg partially solved through its C-shaped pad. Berg, according to Petitioner, introduced a different problem, namely, interference with the crus of helix at the back of the ear, which Varming solved with multiple pads that still engaged the voids at the front of the ear, for stability, but did not interfere with the crus of helix at the back of the ear. Reply 13–14. Petitioner’s characterization of Varming is correct. Varming describes Berg as lacking an “ear plug” like those of Mauney and Feldman, but, because of its C-shaped large pad, it interferes with the crus of helix. Ex. 1005, 2:8–10, 2:20–23. To solve this problem, Varming “suggests a 2 or 3 pad shaped form, with specifically the area around the Crus of Helix removed, in comparison with the devices of the prior art that utilize a continuous form like a C-shape or similar.” Id. at 4:1–3. Berg is the background reference Varming refers to as having a C-shape, and that C-shape is described as interfering with the crus of helix for those with a distinct and emphasized crus of helix. We find that Varming describes removing the area between its pads to accommodate the crus of helix at the back of the ear to avoid a problem that Varming observed with Berg’s device. In other words, Varming expressly teaches modifying Berg’s device to remove a portion that interferes with an extension of the crus of helix at the back of the ear.” slip op. at 31

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

    “problem in Mauney and Feldman (blocked ear canal) that Berg partially solved through its C-shaped pad. Berg, according to Petitioner, introduced a different problem, namely, interference with the crus of helix at the back of the ear, which Varming solved with multiple pads that still engaged the voids at the front of the ear, for stability, but did not interfere with the crus of helix at the back of the ear. Reply 13–14. Petitioner’s characterization of Varming is correct. Varming describes Berg as lacking an “ear plug” like those of Mauney and Feldman, but, because of its C-shaped large pad, it interferes with the crus of helix. Ex. 1005, 2:8–10, 2:20–23. To solve this problem, Varming “suggests a 2 or 3 pad shaped form, with specifically the area around the Crus of Helix removed, in comparison with the devices of the prior art that utilize a continuous form like a C-shape or similar.” Id. at 4:1–3. Berg is the background reference Varming refers to as having a C-shape, and that C-shape is described as interfering with the crus of helix for those with a distinct and emphasized crus of helix. We find that Varming describes removing the area between its pads to accommodate the crus of helix at the back of the ear to avoid a problem that Varming observed with Berg’s device. In other words, Varming expressly teaches modifying Berg’s device to remove a portion that interferes with an extension of the crus of helix at the back of the ear.” slip op. at 31

  Patent outcomesUS 8,630,436 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,630,436
• Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing granted
  PTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8

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

    “a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9

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

    “1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,079,086
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00476 · APJ Garth D Baer · IPR · Final written decision

  Claim 6 is unpatentable over Jaffray MICCAI 2001 under §§ 102(a), 102(b), and 103(a); claims 1–3, 7–10, and 12 are canceled on Patent Owner’s granted motion to amend.

  RulingsFinal written decision

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “communications network”” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a translatable treatment couch coupled to the rotatable gantry via a communications network” Claim 6 requires “a translatable treatment couch coupled to the rotatable gantry via a communications network.” As Petitioner explains, the linear accelerator in Jaffray MICCAI 2001 is an Elekta SL-20. Pet. 16 (citing Ex. 1021, 1076; Ex. 1026 ¶ 167), 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1026 ¶¶ 156, 167). A technical note describing the SL-20 explains as follows: “The hardware/software interaction of the SL-20 makes it particularly suitable for automated data collection. Communication between the control processor and the accelerator, gantry and patient couch is handled by a pair of high-speed serial links. These are daisy-chained through three separate control areas distributed throughout the machine.” Ex. 1015, 220. “[R]ecourse to extrinsic evidence is proper to determine whether a feature, while not explicitly discussed, is necessarily present in a reference.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir. 2001). In light of Exhibit 1015, we agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001’s translatable treatment couch and rotatable gantry are coupled via a communications network—i.e., a link between the two components that allows information to be shared between them. See Pet. 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1015, 220; Ex. 1026 ¶¶ 156, 167); see also Reply 7–12; Ex. 1031 ¶¶ 19– 29.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “Petitioner asserts “to the extent [claim 6 is] not found to be anticipated by Jaffray MICCAI 2001, [claim 6] would have been obvious in view of Jaffray MICCAI 2001.” Pet. 27. In light of our findings on anticipation based on Jaffray MICCAI 2001, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 6 would have been obvious over Jaffray MICCAI 2001. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that anticipation is the epitome of obviousness.”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”). 3. Anticipation of Claim 6 Based on the Jaffray Publication” slip op. at 13

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

    “We agree with Patent Owner that using a computer-controlled treatment couch does not necessarily mean the treatment couch is connected to the gantry via a communications network, as claim 6 requires. See PO Resp. 28. As Patent Owner explains, controlling the couch with a computer “says nothing about how, if at all, the table would be coupled to the rotatable gantry.” Id. In addition, Petitioner’s standard-feature argument, even if correct, is not enough to show the Jaffray Publication necessarily discloses the disputed communications network feature. See Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1355 (Fed. Cir. 2013) (explaining that “anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation”). Thus, we find Petitioner has not shown the Jaffray Publication expressly or inherently discloses “a translatable treatment couch coupled to the rotatable gantry via a communications network,” as claim 6 requires, and consequently has not met its burden to show the Jaffray Publication anticipates claim 6. 4. Obviousness of Claim 6 Based on the Jaffray Publication” slip op. at 14

  Patent outcomesUS 8,116,430 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,116,430
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00380 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either § 103 ground; claims 13 and 18 were canceled after Patent Owner’s motion to amend was granted.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69. Petitioner takes the position that the ultimate scope of the corresponding algorithm “does not matter” because Petitioner contends that the challenged claims are unpatentable even under Patent Owner’s proposed construction. Pet. Reply 315, 3. Nevertheless, Petitioner attacks Patent Owner’s proposed construction as “implicitly adopt[ing]” two “additional but unreasonable limitations.” Id. First, Petitioner contends that “the claims do not require the performance of the function of the second logic to be fully automated and instead permit human interaction with the second logic.” Id. Second, Petitioner contends that blocks 520 (“Position Patient”), 525 (“Register Treatment Image Data with Simulator/Reference Image Data and Reposition Patient”), and 530 (“Position Clinical Treatment Machine”) of Figure 4 “need not be performed in their entirety by logic so long as the second logic is used for some step in each block.” Id. at 4. We find no inconsistency in these positions with Patent Owner’s proposed construction. In light of the foregoing considerations, we adopt Patent Owner’s proposed construction.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00315 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either §103 ground because the references did not disclose the claimed second logic; claims 13 and 18 were canceled by motion.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00956 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving incoming code.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We have considered these constructions in light of the full trial record. We see no compelling reason to alter these constructions in light of the parties’ 4 We repeat our observation from the Institution Decision that claim 9 recites “detecting any one of a plurality of programming languages in which the incoming stream is written” (emphasis added), but requires instantiating the scanner “in response to said determining” (emphasis added), without apparent antecedent basis. We consider “said determining” in claim 9 as intended to refer to the previously recited “detecting,” in parallel with the structure of claims 1 and 22. Dec. 11 n.4. positions as developed during the trial, and we therefore adopt them for this Final Written Decision. See PO Resp. 12–13 (“Although Patent Owner maintains that the terms ‘dynamically building’ and ‘dynamically detecting’ do not require construction, it does not contest these constructions for purposes of this proceeding, and they are, therefore, controlling.”); Reply 3 (noting Patent Owner does not contest the preliminary constructions of “dynamically building” and “dynamically detecting”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Consequently, Dr. Medvidovic opines, and we agree, that “simply because Chandnani’s tokenizer operates on a data stream does not demand or even imply that the data stream is being received while being tokenized.” Id. As Patent Owner contends, because Chandnani discloses that operation of the tokenizer “only occurs on the second pass through the data stream, . . . the data stream must have already been received before the stream of tokens is generated.” PO Resp. 21. “[W]hile it is conceivable (though not explicitly disclosed) that a data stream might be ‘incoming’ while Chandnani uses the ‘language check data to select the language definition data to use for the detection process,’ it is not possible for the data stream to still be ‘incoming’ when the data stream ‘is lexically analyzed again, this time using the language definition data, to generate a stream of tokens.’” Id. (citing Ex. 1003, col. 8, ll. 4–17; Ex. 2007 ¶¶ 73–74).” slip op. at 20

  Patent outcomesUS 8,225,408 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00955 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 were not shown unpatentable under the asserted obviousness combinations because the art did not teach dynamically building a parse tree while receiving the incoming stream.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  Patent outcomesUS 8,225,408 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2015-02001 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 were not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving code.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “5. Conclusion Having considered the arguments and evidence presented by both parties, we conclude that Petitioner has not shown, by a preponderance of the evidence, that any of challenged claims 1, 9, 22, 23, 29, or 35 would have been obvious over the combination of Chandnani and Kolawa, or would have been obvious over that combination in further combination with Walls. Because the challenges of the dependent claims suffer from the same deficiencies, we further conclude that Petitioner has not shown, by a preponderance of the evidence, that those dependent claims would have been obvious over the combinations of art it presents. Because we determine that the art does not disclose “dynamically building” a parse tree “while” receiving an incoming stream of program code, we need not consider whether a further conclusion of nonobviousness is warranted because of evidence of secondary considerations.” slip op. at 24

  Patent outcomesUS 8,225,408 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-01071 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable over Ross because Ross does not teach or suggest content including a call to a first function.

  RulingsFinal written decision

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

    “D. OBVIOUSNESS GROUND BASED ON ROSS The Petition relies on Ross as teaching or suggesting all the limitations of claims 18, 10, and 11. Pet. 1437. Having reviewed the arguments and evidence provided by Petitioner and the arguments and evidence presented by Patent Owner, we determine that Petitioner has failed to show by a preponderance of the evidence that Ross teaches or suggests all the limitations of the challenged claims, and more particularly, “the content including a call to a first function.”” slip op. at 11

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

    “first function.” But the Specification uses the phrase “function call” in stating that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3842. The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. From such examples, we understand the Specification to use the phrase “function call” in the same sense that the claims recite in the phrase “call to a [] function.” That is, a “call” is part of the recited “content,” as a statement or instruction containing the function that, when executed, causes the function to provide a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “3. Conclusion Having considered the arguments and evidence presented by both parties, we determine that Petitioner has not shown by a preponderance of the evidence that the challenged claims would have been obvious over Ross. Because we find that Ross does not teach or suggest “content including a call to a first function,” we need not consider whether Patent Owner succeeded in its attempt to prove the prior invention of the ’154 patent or whether a conclusion of nonobviousness is warranted because of evidence of secondary considerations of nonobviousness.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “[w]hile replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. The Board will not attempt to sort proper from improper portions of the reply. 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 patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing. Trial Practice Guide, 77 Fed. Reg. at 48767; see also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir., 2015) (discussing that a patent owner “is undoubtedly entitled to notice of and fair opportunity to meet the grounds of rejection.”). With these guidelines in mind, we are persuaded that the above-identified argument in the Reply should not be considered in deciding this matter. As stated above, the Petition relies on Ross’s “hook functions within a hook script” as teaching or suggesting the “call to a first function.” Pet. 1718. Although the Petition relies on the understanding of a person of ordinary skill in the art when explaining Ross’s handling of the hook function, Petitioner does not assert in any meaningful way that Ross’s use of hook functions in the hook script would be modified to include calls to additional hook functions that Ross does not describe. Nor does Petitioner explain in the Petition that Ross would be modified to replace the assignment instruction with a call to the hook function. The arguments in the Reply are not explanations of how Ross’s hook functions, as taught by Ross, may be understood to include the recited “call to a first function,” as asserted in the Petition. Rather, the argument that a “call” may be added to either the security check or the hook script is an alteration of Ross, necessitated because Patent Owner correctly argues that Ross fails to teach or suggest the limitation. The contention that Ross’s embodiments would be modified, altered, or imbued with details not present in Ross is a new contention, necessary to make a case for the unpatentability of the claims, and should have been presented in the Petition. To consider the argument would unfairly prejudice Patent Owner who, after having argued there is a significant gap in Petitioner’s case, would be left without an opportunity to respond substantively to the new arguments and support its rebuttal with additional evidence, if necessary. Accordingly, we do not consider the improper arguments identified above.” slip op. at 20

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154

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.