• Netskope, Inc. v. Fortinet, Inc.Instituted
  PTAB · Sep 8, 2023 · IPR2023-00459 · APJ James P Calve · IPR · Institution

  Instituted IPR of claims 1–7 and 10–31 on all eight asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 8. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent. Our decision would be the same under either formulation.” slip op. at 8

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

    “Nonetheless, we provide the following guidance for the meaning of “fabric,” in claims 1, 15, 21, and 27 to assist the parties in the upcoming trial, and encourage the parties to address this term at the appropriate stages of the trial. At this stage of the proceeding, based on the current record, we interpret “fabric” as “a network topology such as the physical structure of a switch or network.” This is consistent with an ordinary, customary meaning. Ex. 2003, 3 (defining a “fabric” as “[a] descriptive term referring to the physical structure of a switch or network.”) (cited in Prelim. Resp. 12). This meaning is consistent with Patent Owner’s assertion that “fabric” is an “interconnected topology” in “enterprise networks.” Prelim. Resp. 10. Patent Owner’s declarant, Dr. Black, testifies that “[a]s enterprise networks became larger and larger, a complex, interconnected topology known as a ‘fabric’ was developed to handle the management of such networks.” Ex. 2001 ¶ 44 (cited in Prelim. Resp. 10). Dr. Black testifies that “a fabric of network devices (such as switches or access points for each subnetwork) was developed to manage network traffic between subnetworks, and to and from the Internet.” Id. This meaning is consistent with the ’825 patent, which describes a private network 120 topology of computers and servers coupled together by a local area network (LAN) or a wireless LAN. Ex. 1001, 5:3–9, Fig. 1. “FIG. 2 shows a topology 200 of a cooperative security fabric that consists of network security appliances of FIG. 1.” Id. at 5:50–51 (emphasis added). Root node 220 corresponds to network security appliance 121 and acts as a wide area network (WAN) role in topology 200 to connect a private network to other networks or the Internet. Id. at 5:52–56. It is the outermost network security appliance of the cooperative security fabric. Id. at 5:52–55.” slip op. at 9

  • BurdenInstituted

    “At this stage, based on the evidence and arguments, we conclude that Petitioner has provided sufficient evidence at this stage to establish that Chandra discloses element 1[b].” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,084,825
• Netskope, Inc. v. Fortinet, Inc.Instituted
  PTAB · Sep 8, 2023 · IPR2023-00458 · APJ James P Calve · IPR · Institution

  The Board instituted IPR on claims 1–3, 6, 8–17, and 21–27 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had a B.S. in computer science, computer engineering, or electrical engineering, with at least two years’ experience in computer networking/security.” Pet. 15. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 15–16. Patent Owner asserts that the positions set forth in the Preliminary Response would be the same under either parties’ proposal. Id. at 16. We adopt Petitioner’s proposal as more consistent with the prior art and the ’678 patent. Our decision would be the same under either formulation.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). The parties assert that the claims should be given their ordinary and customary meaning in light of the specification and no claim constructions are necessary at this time. Pet. 15; Prelim. Resp. 16. We agree that no express claim constructions are required at this time to render our decision.” slip op. at 9

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

    “These arguments do not address Petitioner’s contentions that a skilled artisan would have combined Shikfa’s searchable encryption mechanism with Cidon’s encryption technique that divided content into segments with a segment identifier for each chunk to enable a search for encrypted chunks to “allow Cidon’s system to search and locate files on a segment-by-segment basis” as “implemented in Herrmann’s gateway server.” Pet. 43–44 (citing Ex. 1004, Fig. 13; Ex. 1006 ¶¶ 39, 50; Ex. 1002 ¶¶ 105–107). Petitioner asserts that the modified system would have searched encrypted file content without requiring such capability at a storage provider to maintain privacy, to protect confidential information, and to allow storage on cloud storages that lack search capability. Pet. 44 (citing Ex. 1006 ¶ 50; Ex. 1002 ¶ 105). Shikfa’s searchable encryption would improve Cidon’s ability to search the content of encrypted document segments. KSR, 550 U.S. at 417 (using a technique that improved one device to improve other devices in the same way is obvious unless its application is beyond the level of ordinary skill in the art). The improvement preserves the privacy of files, locates files by segments, and allows storage on cloud providers lacking search ability. Pet. 44; see DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (holding that an implicit motivation exists when an “improvement” makes a product/process stronger, cheaper, faster, lighter, smaller, more durable, and/or more efficient).” slip op. at 23

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,280,678
• Netskope, Inc. v. Fortinet, Inc.Instituted
  PTAB · Aug 30, 2023 · IPR2023-00456 · APJ James P Calve · IPR · Institution

  Instituted IPR on claims 1–28 on all three §103 grounds based on the Board’s finding of a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in computer science, computer engineering, or electrical engineering (or equivalent experience) and at least two years’ practical experience with computer networking and computer security.” Pet. 15. Patent Owner asserts a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of networks and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 13 (asserting that the positions in the Preliminary Response are the same under either proposal). The two formulations are similar, differing mainly in the level of experience required. We adopt Patent Owner’s proposal as more consistent with the ’856 patent and prior art, but our analysis would be the same under either party’s proposal.” slip op. at 10

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

    “would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties assert that claim terms should receive their plain and ordinary meaning, and no claim terms require construction. Pet. 16; Prelim. Resp. 13–14. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision.” slip op. at 10

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

    “reasonable expectation of success (Prelim. Resp. 24), “[t]he reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Absolute predictability of success is not required. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Given the broad scope of natively mounted, the disclosure that AWS provides software to natively mount files (Ex. 1001, 5:23–32), and Burdett’s similar native mounting of cloud files to a scanning service (see Ex. 1004, 23:33–24:18, 25:34–55, 27:20–29:41), Petitioner has shown a reasonable expectation of success in combining Burdett and FortiSandbox to meet this limitation. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339 (Fed. Cir. 2020) (“The specification of the [patent-at-issue] is entirely silent on how to transmit user locations and maps from a server to a user’s mobile device, suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this.”). Descriptions of native mounting in the ’856 patent, FortiSandbox, and Burdett indicate that native mounting can be accomplished with a reasonable expectation of success. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (“[T]he Board’s observation that appellant did not provide the type of detail in his specification that he now argues is necessary in prior art references supports the Board’s finding that one skilled in the art would have known how to implement the features of the references.”). Regarding the motivation to combine, FortiSandbox natively mounts network shares to security devices to scan suspicious files for malware (Ex. 1005, 113–115; Pet. 18–19), and Petitioner contends that this technique would improve Burdett similarly to perform malware scans of public cloud store files via native communications while preventing users from accessing malicious files (Pet. 19, 29–30). See KSR, 550 U.S. at 417.” slip op. at 24

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,036,856
• Bright Data Ltd. v. Oxylabs, UabInstituted
  PTAB · Jul 18, 2023 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Institution

  Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of success on at least one claim and compelling merits for Scoda anticipation of claim 1.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Office (“USPTO”) issued a Memorandum7 titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. For the reasons that follow, although we find that Fintiv factors 1–5 weigh in favor of denying institution in this case, we determine that the Petition presents compelling merits as to the challenged claims, and thus, we decline to exercise our discretion to deny the Petition.” slip op. at 10

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’162 patent. Accordingly, we institute an inter partes review as to the challenged claims on the grounds of unpatentability asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “recited in the Petition, does cite throughout to the asserted art and provides support for its assertions that the art discloses the claim language. We, therefore, determine Dr. Williams’s declaration is not without evidentiary support. See 37 C.F.R. § 42.63 (“Evidence consists of affidavits, declarations, transcripts of deposition, documents, and things.”). At this stage, we give weight to Dr. Williams’s testimony, which is the only testimony we have before us in this proceeding relating to the asserted art and how the art discloses the claim limitations. In contrast to the situation presented here, neither the petition nor the declarant in Xerox provided sufficient evidence to support the asserted positions; rather, the petition merely cited to the declaration which merely repeated the unsupported, conclusory assertions set forth in the petition. See Xerox Corp., IPR2022-00624, Paper 12 at 5 (stating the cited declaration testimony is conclusory and unsupported and adds little to the conclusory assertion for which it is offered to support); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). That is not the case here. As noted above, however, the ultimate weight of Dr. Williams’ testimony will be determined in light of the full record adduced during trial.” slip op. at 28

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,516,091
• Bright Data Ltd. v. Oxylabs, UabInstituted
  PTAB · Jul 18, 2023 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1–5, finding a reasonable likelihood of success on the Athas anticipation and Hallak–Matthys obviousness grounds; it did not reach the Scoda–Matthys ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’457 patent and all of the asserted grounds of unpatentability.” slip op. at 2

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

    “Petitioner proposes that all terms should have their plain and ordinary meaning. Pet. 14. Patent Owner responds that “[t]he ’457 Patent expressly defines a number of terms that are used in the claims,” and highlights several such definitions for the terms “web page,” “network appliance,” “browser,” and “embedded script.” Prelim. Resp. 6–7. In addition, Patent Owner proposes a construction for the second recitation in claim 1 of the phrase “a number of packets” that Patent Owner alleges is “consistent with both the specification and figures of the ’457 Patent.” Id. at 7–8. Having considered the positions of the parties, we find that for the purpose of this decision, it is unnecessary expressly to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We, therefore, do not agree that Petitioner’s alleged failure to expressly address the meaning of claim terms should prevent us from instituting review as asserted by Patent Owner. See, e.g.,” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). At this juncture, Patent Owner does not provide a description of an ordinarily skilled artisan. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner. Based on the current record, this proposal is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Williams testifies that “a [person of ordinary skill] would recognize that there are advantages analyzing web page data, including metadata and packets to provide a more robust monitoring and filtering ability.” Williams Decl. ¶ 150. He concludes that “it would have been obvious to adapt Hallak to utilize metadata and packet level analytics as disclosed in Matthys to produce more detailed filtering and detection in protecting web clients and web-based applications.” Id. ¶ 151. He reasons further that “[t]he use of metadata and data packet analytics as suggested by Matthys into the Hallak process would have been an obvious implementation for a [person of ordinary skill] and would have also been done expecting success.” Id. At this stage we find this testimony consistent with the record, helpful, and credible. On the other hand, we do not find Patent Owner’s arguments to the contrary to be supported by any evidence of record at this stage. Prelim. Resp. 22–28. For example, Patent Owner argues that “[t]he Petition fails to explain how adding a script to be processed at the client would protect web clients or how this would be compatible with Hallak’s system.” Prelim. Resp. 23. But Dr. Williams testifies that adapting Hallak to use Matthys’s metadata and packet-level analytics would “produce more detailed filtering and detection in protecting web clients and web-based applications.” Williams Decl. ¶ 151. We, therefore, are not persuaded that Petitioner’s showing of motivation to combine these references is “deficient.” Prelim. Resp. 22–25. Nor do we agree, for reasons discussed supra, that Petitioner’s element-by-element analysis “fails to provide any explanation or specific details,” or that Dr. Williams “does not provide any clarification.” Id. at 25– 28.” slip op. at 23

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,924,457
• Bright Data Ltd. v. Oxylabs, UabInstituted
  PTAB · Jul 18, 2023 · IPR2023-00185 · APJ Thomas L Giannetti · IPR · Institution

  Instituted inter partes review of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success and compelling merits for the WebShield anticipation challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.” (“Guidance Memo”).7 The Director’s Guidance Memo states that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Id. at 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. For the reasons that follow, although Fintiv factors 1–5 weigh in favor of denying institution, we determine that the Petition presents compelling merits, and on this record, we thus decline to exercise our discretion to deny the Petition. We first discuss application of the Fintiv factors to this case.” slip op. at 10

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. In addition, for the reasons stated, we are not persuaded to exercise our discretion to deny the Petition under 35 U.S.C. § 314(a). We, therefore, institute inter partes review as to all of the challenged claims of the ’498 patent and all of the asserted grounds of unpatentability.” slip op. at 2

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

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner proposes that all terms should be given their plain and ordinary meaning. Pet. 17. Patent Owner responds that “[t]he ’498 Patent expressly defines a number of terms that are used in the claims,” namely, “web page,” “network appliance,” “browser,” and “embedded script.” Prelim. Resp. 7–8. Patent Owner contends that the Petition “fails to address the specification’s definitions of claim terms, much less demonstrate that the cited references disclose each claimed element according to its appropriate meaning.” Id. at 7. Having considered the positions of the parties, we find that for the purpose of this decision, it is unnecessary expressly to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We therefore do not agree that Petitioner’s alleged failure to address the meaning of claim terms should prevent us from instituting review as asserted by Patent Owner. See, e.g., Prelim. Resp. 20– 21. Patent Owner’s arguments regarding the asserted grounds of” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation marks omitted). Petitioner asserts that a person of ordinary skill in the art of the ’498 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 16 (citing Ex. 1007 ¶¶ 30– 9 Neither party presents evidence or arguments regarding objective evidence of non-obviousness at this stage. 31). At this juncture, Patent Owner does not provide a description of an ordinarily skilled artisan. For purposes of this decision, we adopt the level of ordinary skill as articulated by Petitioner. Based on the current record, this proposal is consistent with the ’498 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,503,498
• Metacluster LT, Uab v. Bright Data Ltd.Instituted
  PTAB · May 15, 2023 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Institution

  Instituted PGR on claims 1–34 on all petitioned grounds; the Board found a reasonable likelihood that claims 1–34 are obvious over Mithyantha and claim 31 over Mithyantha with RFC 2616.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “the patent is based on matters previously presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 7 (PTAB Feb. 13, 2020). The starting point in this analysis is the two-part framework set forth in Advanced Bionics: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8. The first inquiry in the Advanced Bionics framework asks whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, Paper 6 at 8–9. Petitioner does not dispute that the Mithyantha and RFC 2616 references were previously presented to the Office in an IDS (Information Disclosure Statement), but were not applied by the Examiner. Pet. 9–10. Thus, Patent Owner shows that the first criterion of the Advanced Bionics framework is met as to those two references. Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).”).” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “Finally, we address Patent Owner’s claim of harassment by Petitioner. Prelim. Resp. 2–3. As Petitioner points out, the Petition here is the only petition challenging the ’953 patent. Pet. 10. That Petitioner has challenged other patents of Patent Owner, both in district court proceedings and in the PTO, is a response to Patent Owner’s active multi-patent litigation program, and for that reason does not persuade us to deny this Petition, which is directed to a different patent. For the foregoing reasons, we deny Patent Owner’s request that we exercise our discretion to deny the Petition.” slip op. at 11

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

    “We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’953 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exclusion of the qualifier “at least” because it introduces ambiguity. We determine that Petitioner’s definition is consistent with the prior art of record and the skill reflected in the specification of the ’953 patent based on our review of the record.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,349,953
• Netskope, Inc. v. Fortinet, Inc.Instituted
  PTAB · Apr 27, 2023 · IPR2023-00030 · APJ James P Calve · IPR · Institution

  The Board instituted inter partes review of claims 1–22 on all twelve asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the challenged claims. We therefore grant institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties substantially agree on the level of ordinary skill in the art. Consistent with these proposals, we adopt Petitioner’s proposal for purposes of this Decision, in addition to Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant work or research experience also suffice. See also Prelim. Resp. 13 (asserting that the positions set forth in the Preliminary Response would be the same under either of the parties’ proposals). Based on the preliminary record, this level of ordinary skill appears to be consistent with the description of the relevant field and background art in the ’941 patent. See, e.g., Ex. 1001, 1:14–3:51.” slip op. at 8

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

    “The ’941 patent claims and specification indicate that endpoint-to- endpoint connections are “within the enterprise network,” that is, between computing devices in the enterprise network. Ex. 1001, 1:66–2:17, 2:58– 3:10, 25:8–10, 26:7–9; Prelim. Resp. 17 n. 5. Petitioner asserts that Wang controls endpoint-to-endpoint connections by implementing a firewall policy that subnet 206 and its computing systems should not access computing resources of subnet 204. Pet. 27 (citing Ex. 1003 ¶ 21). Dr. Lee testifies that a skilled artisan would have understood or found it obvious that Wang’s firewall policy controlled traffic between subnets and between computing endpoints within those subnets. Ex. 1002 ¶ 69 (cited in Pet. 27–28). The claims recite “controlling endpoint to endpoint connections within the enterprise network according to the set of security policies” but do not claim how the endpoint-to-endpoint connections are controlled.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “C. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103 if differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Similarly, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (holding an implicit motivation to combine exists not only when a suggestion can be gleaned from the prior art as a whole, but also when the “improvement” is technology-independent and the combination of references results in a product or process that is desirable because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Neither party presents any objective evidence of non-obviousness.” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,826,941
• Netskope, Inc. v. Fortinet, Inc.Instituted
  PTAB · Apr 26, 2023 · IPR2022-01587 · APJ James P Calve · IPR · Institution

  The Board instituted inter partes review of claims 1–8 and 11–18 on all eight asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties substantially agree on the level of ordinary skill in the art. Consistent with these proposals, we adopt Petitioner’s proposal for purposes of this Decision, in addition to Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant experience also suffice. Based on the preliminary record, this level of ordinary skill appears to be consistent with the description of the relevant field and background art in the ’282 patent. See, e.g., Ex. 1001, 1:32–2:24.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Mohapatra’s testimony evidences skilled artisans would have had a reasonable expectation of success in combining Nagayama and Crawford. Dr. Mohapatra testifies that Nagayama and Crawford describe improved content filtering systems for data transferred to an open network, and their overlapping objectives and technologies could complement one another to improve content filtering. Ex. 1002 ¶ 95. Dr. Mohapatra also testifies that Nagayama’s system “could be improved by including content-based filtering on a network service into a single policy” to expand the scope of the filtering rules to include parameters in a single filter rule. Id. ¶ 96. Dr. Mohapatra also testifies that Nagayama and Crawford filter network traffic for network services. Id. ¶¶ 119–125. Dr. Mohapatra testifies that skilled artisans know how to filter data at gateways for network services, watermarks, and other data using port numbers and packets. Id. ¶¶ 49, 54–61, 64–66, 70–73, 120. Petitioner cites Dr. Mohapatra’s testimony to support its contentions that skilled artisans could have combined Nagayama and Crawford with a reasonable expectation of success. Pet. 22–23 (citing Ex. 1002 ¶¶ 94–97), 35–37 (citing Ex. 1002 ¶¶ 119–122), 8–11 (citing Ex. 1002 ¶¶ 47–73). Patent Owner’s declarant, Dr. Black, testifies a skilled artisan would not have had a reasonable expectation of success in modifying Nagayama’s network security device (filtering means 60) to filter network traffic for network services and apply filter rules that are active for a network service due to the complexity of firewall systems and myriad design challenges. Ex. 2001 ¶ 45. We do not find this testimony persuasive at least because claims 1 and 11 do not claim a firewall of any particular configuration, much less one with any of the complex features and functions that Dr. Black discusses in his testimony.” slip op. at 26

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

    “Petitioner contends that no claim construction is needed except for the term “watermark.” Pet. 16. Petitioner asserts, “a watermark must include “(1) information indicative of one or more of a source, origin, owner, author of a document or a file, or a company identifier, and (2) a sensitivity level.” Id. at 17. Patent Owner does not dispute this construction but instead contends that the term need not be construed because it does not impact any pending dispute between the parties. See Prelim. Resp. 13. We do not rely on Petitioner’s proposed definition of watermark because an interpretation of this limitation is not necessary for resolving the parties’ dispute in this proceeding.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,237,282
• Meta Platforms, Inc. v. Almondnet, Inc.Instituted
  PTAB · Apr 7, 2023 · IPR2022-01436 · APJ Lynne H Browne · IPR · Institution

  The Board instituted IPR on claims 11–16, 19, and 20, finding a reasonable likelihood that the challenged claims are obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all supporting evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims, and thus, we institute an inter partes review of all challenged claims on all presented challenges.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 12. (citing Ex. 1002 ¶¶ 10–14). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not challenge this definition of the level of skill at this time. Prelim. Resp. 4. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 6

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

    “We disagree. Both parties rely on an implicit interpretation of the claim language “as a result of automatic electronic URL redirection,” and construction of this terminology is necessary to our determination as to whether trial should be instituted in this proceeding. Patent Owner’s implicit interpretation of this claim language precludes intervening user interaction in the time period between redirection and receipt of profile information. Prelim. Resp. 14. Specifically, Patent Owner contends that the claim language at issue precludes Rosenberg’s disclosure of a system wherein partial profile information is created after automatic URL redirection and then sent to a receiving computer system. See id. at 14–20. The Petitioner’s implicit interpretation of the claim language “as a result of automatic electronic URL redirection” does not preclude such intervening action as evidenced by Petitioner’s assertion that Rosenburg meets this claim language. Pet. 42–46. The Petition advances two theories for how Rosenburg discloses this limitation and both of these theories rely on actions that occur after URL redirection. Id. On the record before us, we determine that Patent Owner’s implicit definition of the claim language “as a result of automatic electronic URL redirection” is overly narrow. The claim does not preclude intervening user action between the time of URL redirection and receipt of the partial profile. Ex. 1001, 17:45–18:8. To the extent, if any, that the Specification of the ’582 patent describes such a preclusion, we decline to read limitations from the Specification into the claims.” slip op. at 7

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

    “vi. Limitation (e) - wherein the maintained profile, including the added partial profile, comprises data used in targeting third party advertisements to the user computer over the global computer network. Petitioner asserts that Rosenberg, Zeff, and Stern disclose or suggest limitation (e). Pet. 49–53. In particular, Petitioner asserts that “Rosenberg discloses and renders obvious that ‘the maintained profile’ of the user – including the newly-added user tracking information (‘the added partial profile’) – can be used to target advertisements to the user computer.” Id. at 49. Petitioner asserts further that “Rosenberg can also target based on demographic information in the maintained profile” and thus, discloses a “partial profile, [that] ‘comprises data used in targeting third-party advertisements to the user computer over the global computer network.’” Id. at 50–51. Petitioner admits that “Rosenberg does not expressly state that its ‘customized responses’ contain ‘target[ed] third-party advertisements,’” but asserts that “this would have been obvious based on Rosenberg,” because “Rosenberg explains that one of the purposes of his invention is to ‘allow editors and advertisers to tailor their content to users.’” Id. at 51 (citing Ex. 1003, 3:6–8). Petitioner also asserts that “[t]his would also have been obvious based on Rosenberg in further view of Zeff and Stern.” Pet. 51–52. Petitioner asserts that “Zeff and Sterne are analogous references describing the Firefly Passport system which provides a profile sharing service similar to database server 25 in Rosenberg” and that “Zeff and Sterne explain that Firefly Passports can be shared with websites and used for targeting third-party advertisements. Id. at 52 (citing Ex. 1002 ¶ 109–11, 113; Ex. 1004, 57–58; Ex. 1005, 171–172). Petitioner reasons that “[i]t therefore would have been obvious to implement Rosenberg for ‘targeting third-party advertisements,’ such as advertisements for products or services provided by third parties.” Id. (citing Ex. 1002 ¶ 132). Petitioner provides further reasoning in support of the proposed combination on pages 52–53 of the Petitioner. Patent Owner does not dispute Petitioner’s assertions and reasoning regarding limitation (e). vii. Conclusion For Claim 11 Regarding contested limitation (b), as discussed in Section II.B above,” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,244,582

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.