• Apple Inc. v. Carbyne Biometrics, LLCInstituted
  PTAB · Aug 1, 2024 · IPR2024-00329 · APJ Steven M Amundson · IPR · Institution

  The Board instituted review of claims 1, 2, 4–7, 9, 10, 12–15, 17, and 20–23 on all Petition grounds after finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • Other 314aDenied

    “determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 90

  Discretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,972,010
• Apple Inc. v. Carbyne Biometrics, LLCInstituted
  PTAB · Aug 1, 2024 · IPR2024-00331 · APJ Steven M Amundson · IPR · Institution

  The Board instituted IPR on claims 1–12, 14–18, and 20–23 based on a reasonable likelihood of success on at least one claim, applying all challenges in the Petition.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • Other 314aOther

    “V. CONCLUSION Based on the arguments and evidence presented by the parties, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 95

  • Obviousness (§103) › Analogous artAnalogous artInstituted

    “4. WHETHER PETITIONER ESTABLISHES A REASONABLE LIKELIHOOD THAT STONE IS ANALOGOUS ART” slip op. at 38

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,526,886
• Apple Inc. v. Ald Social, LLCAdverse judgment
  PTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment

  The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5

  None
  Patents in suitUS 9,402,158
• Apple Inc. v. Ald Social, LLCAdverse judgment
  PTAB · Jul 23, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Adverse judgment

  The Board entered adverse judgment against ALD Social, LLC on claims 1–14 of the ’054 patent and terminated IPR2023-01398 after finding unequivocal abandonment.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5

  None
  Patents in suitUS 9,198,054
• Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Jul 22, 2024 · IPR2023-01329 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–27 are unpatentable as obvious over Law; the Board did not reach the additional grounds based on Wood or Jungck.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attack.” Pet. 8 (citing Ex. 1003 ¶ 33). Patent Owner cites to the ’1154 decision, and that panel’s assertion regarding the level of ordinary skill in the art, stating it is the level that it adopts. PO Resp. 6 (citing Ex. 2012 ¶¶ 25–30). Reviewing both statements, we determine no substantive differences between the two, and continue to adopt the level adopted in the Decision to Institute. See Dec. to Inst. 12–13.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner argues that the preambles of independent claims 1, 8, and 15 should be found to be limiting because those preambles provide antecedent basis for multiple limitations recited later in the claims, and because the limitations in the preambles “give life, meaning, and vitality” to the claims. PO Resp. 6–7 (citing Ex. 2012 ¶¶ 38–39; Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). Per the Institution Decision, we continue to find the preambles of the independent claims to be limiting. See Dec. to Inst. 14.” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments. A review of the ’266 Patent does not show the disclosure of “initial dynamic security policy,” or equivalent, and the cited sections (Ex. 1001, 14:13–31) also do not discuss such extra limitations. The ’266 Patent provides: Security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more packet security gateways within network environment 100. … For example, security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more of packet security gateways 112, 114, 116, and 118 on a periodic basis, under specified network conditions, whenever security policy management server 120 receives a new dynamic security policy, whenever a dynamic security policy stored on security policy management server 120 is changed or altered, or in response to a request from one or more of packet security gateways 112, 114, 116, and 118. Ex. 1001, 13:35–50 (emphasis added). Per this disclosure, the PSGs may receive multiple DSPs from the SPMS, with different PSGs receiving different DSPs. This disclosure undercuts the argument that the first set of packet filtering rules needs to be an initial set. We also disagree that this would require the PSGs to produce DSPs; rather, the SPMS would still create and update the DSPs, on an on-going basis, such that a second set can be updated by third set, with that second set being an initial set with respect to the third set, etc. Additionally, the structure of independent claim 1, for example, is directed to a method of filtering packets, such that the claim may read upon a network environment where the plurality of PSGs already contain a DSP, application of another DSP with a first set of packet rules, that are subsequently updated. As such, we are unpersuaded that the implicit claim construction determined in the Institution Decision was incorrect and not in keeping with the language of the claim and the scope of the disclosure of the ’266 Patent.” slip op. at 10

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

    “Patent Owner also cites claim constructions that have been adopted in previous IPR proceedings (PO Resp. 12–13), but asserts that “these proceedings do not turn on these constructions, and thus these constructions are not necessary. Id. (citing See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner with respect to the additional listed claim limitations and determine that no other claim terms need to be construed expressly for purposes of this Decision.” slip op. at 11

  Patent outcomesUS 10,785,266 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,785,266
• Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Jul 22, 2024 · IPR2023-00445 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–27 are unpatentable as obvious over Law; the Board did not reach the additional grounds based on Wood or Jungck.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attack.” Pet. 8 (citing Ex. 1003 ¶ 33). Patent Owner cites to the ’1154 decision, and that panel’s assertion regarding the level of ordinary skill in the art, stating it is the level that it adopts. PO Resp. 6 (citing Ex. 2012 ¶¶ 25–30). Reviewing both statements, we determine no substantive differences between the two, and continue to adopt the level adopted in the Decision to Institute. See Dec. to Inst. 12–13.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner argues that the preambles of independent claims 1, 8, and 15 should be found to be limiting because those preambles provide antecedent basis for multiple limitations recited later in the claims, and because the limitations in the preambles “give life, meaning, and vitality” to the claims. PO Resp. 6–7 (citing Ex. 2012 ¶¶ 38–39; Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). Per the Institution Decision, we continue to find the preambles of the independent claims to be limiting. See Dec. to Inst. 14.” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments. A review of the ’266 Patent does not show the disclosure of “initial dynamic security policy,” or equivalent, and the cited sections (Ex. 1001, 14:13–31) also do not discuss such extra limitations. The ’266 Patent provides: Security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more packet security gateways within network environment 100. … For example, security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more of packet security gateways 112, 114, 116, and 118 on a periodic basis, under specified network conditions, whenever security policy management server 120 receives a new dynamic security policy, whenever a dynamic security policy stored on security policy management server 120 is changed or altered, or in response to a request from one or more of packet security gateways 112, 114, 116, and 118. Ex. 1001, 13:35–50 (emphasis added). Per this disclosure, the PSGs may receive multiple DSPs from the SPMS, with different PSGs receiving different DSPs. This disclosure undercuts the argument that the first set of packet filtering rules needs to be an initial set. We also disagree that this would require the PSGs to produce DSPs; rather, the SPMS would still create and update the DSPs, on an on-going basis, such that a second set can be updated by third set, with that second set being an initial set with respect to the third set, etc. Additionally, the structure of independent claim 1, for example, is directed to a method of filtering packets, such that the claim may read upon a network environment where the plurality of PSGs already contain a DSP, application of another DSP with a first set of packet rules, that are subsequently updated. As such, we are unpersuaded that the implicit claim construction determined in the Institution Decision was incorrect and not in keeping with the language of the claim and the scope of the disclosure of the ’266 Patent.” slip op. at 10

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

    “Patent Owner also cites claim constructions that have been adopted in previous IPR proceedings (PO Resp. 12–13), but asserts that “these proceedings do not turn on these constructions, and thus these constructions are not necessary. Id. (citing See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner with respect to the additional listed claim limitations and determine that no other claim terms need to be construed expressly for purposes of this Decision.” slip op. at 11

  Patent outcomesUS 10,785,266 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,785,266
• Apple Inc. v. Carbyne Biometrics, LLCInstituted
  PTAB · Jul 16, 2024 · IPR2024-00334 · APJ Jameson Lee · IPR · Institution

  The Board instituted IPR of claims 1–3, 5, 7, 8, 10–15, 17, 19, and 22–25 on all petitioned grounds, finding a reasonable likelihood of success on the asserted obviousness challenges.

  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) (2023). 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 contentions and the evidence before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’138 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’138 patent on all grounds set forth in the Petition.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner’s contentions are misplaced. It is an oversimplification to say that if the expert testimony is the same as statements in the Petition, then the testimony should be accorded no weight. The issue is not whether the two are the same or nearly identical. Rather, the issue is whether the testimony refers to supporting evidence or contains technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). This is consistent with 37 C.F.R. § 42.65(a), which states: “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” We do not accord expert testimony little or no weight simply because it is verbatim to what Petitioner states in the Petition. Patent Owner has not even attempted to show that Dr. McDaniel’s testimony is without citation to underlying evidence and lacks technical reasoning. Further, Dr. McDaniel’s testimony regarding motivation to combine the teachings of Kesanupalli and Brown includes numerous other paragraphs, e.g., paragraphs 75–79, and Dr. McDaniel also has testified to the technical content of Kesanupalli, e.g., paragraphs 65–70. All of that testimony should be read together in determining whether Dr. McDaniel’s testimony regarding combining the teachings of Kesanupalli and Brown is wholly conclusory, i.e., without any evidentiary support or technical reasoning. Patent Owner has not shown that it is. Thus, Patent Owner’s argument that Dr. McDaniel’s testimony should be accorded no weight as to the reasonable expectation of success analysis lacks merit. We decline to accord Dr. McDaniel’s testimony no weight. E.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 18–21). At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which would make the stated scope without an upper bound and thus potentially cover the level of skill of an expert. It is supported by the testimony of Dr. McDaniel (Ex. 1003 ¶¶ 18–21) and not disputed by Patent Owner (Prelim. Resp. 10–11). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Each independent claim recites generally “a processor;” and the ’138 patent states “[a]s used herein, the term ‘processor’ refers to one or more devices, circuits, and/or processing cores configured to process data, such as computer program instructions.” APPL-1001, 2:21–23. POSITA would understand that the plain and ordinary meaning of the term “processor” may include “one or more devices, circuits, and/or processing cores,” which includes a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor. APPL-1003, ¶56. Pet. 7. Patent Owner has not proposed a construction for “processor” and states that “it does not address these positions [of Petitioner]” because its Response “does not depend on these definitions.” Prelim. Resp. 11. Based on the description in the specification of the ’138 patent, as cited by Petitioner, we determine, preliminarily, that a “processor,” in the context of the ’138 patent, may include a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,514,138
• Apple Inc. v. Carbyne Biometrics, LLCInstituted
  PTAB · Jul 16, 2024 · IPR2024-00332 · APJ Arthur M Peslak · IPR · Institution

  The Board instituted review of claims 1–6, 10–16, 20, and 21 because Apple showed a reasonable likelihood that at least one claim would have been obvious over Kesanupalli, Challener, and Cheng.

  RulingsInstitution decision

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

    “discretionary denials in AIA post-grant proceedings with parallel district court litigation. See Ex. 1025, Memorandum to Members of the PTAB from Director Vidal, dated June 21, 2022 (“Memorandum”). In the Memorandum, the Director states that “[w]hen a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Further, when such a stipulation is provided, “the grounds the PTAB resolves will differ from those present in the parallel district court litigation” and “the PTAB will not discretionarily deny institution of an IPR.” Id. In this case, Petitioner provides a stipulation that falls within the contours of the Memorandum. Ex. 1029, 1. Petitioner’s stipulation meets the requirements of a stipulation pursuant to Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A), and, therefore, the Director’s Memorandum governs our determination here. For the foregoing reasons, in accordance with the Director’s Memorandum, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a) due to the parallel district court litigation.” slip op. at 11

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

    “Because neither the same nor substantially the same art or arguments were made to the Office during prosecution of the ’512 patent or in the 251 IPR, we determine that the first prong of the Advanced Bionics framework is not satisfied. Since the first prong of the Advanced Bionics framework is not satisfied, we need not reach the second prong of the Advanced Bionics framework. Accordingly, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 16

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition 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 Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’512 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’512 patent on the ground stated in the Petition.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “(PTAB Aug. 24, 2022) (precedential), the Board accorded “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning. In Xerox, the Board held that the critical inquiry is whether a declaration is conclusory and unsupported and whether it discloses underlying facts or data on which the opinion is based. Xerox, Paper 9 at 15 (quoting 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.”)); see also RightQuestion, Paper 17 at 23 (“Petitioner’s declarant makes these same statements verbatim, without more, and with no additional citations to evidence.”). Patent Owner ignores Dr. McDaniel’s testimony summarizing the relevant disclosures from Kesanupalli, Challener, and Cheng. Ex. 1003 ¶¶ 61–73. Patent Owner also ignores Dr. McDaniel’s testimony of the specific basis for his opinion that a person of ordinary skill in the art would have been motivated to combine Kesanupalli and Challener with a reasonable expectation of success. Ex. 1003 ¶¶ 74–80. This testimony contains specific detailed citations to the references in support of Dr. McDaniel’s opinions. We, thus, find that Dr. McDaniel’s testimony, taken as a whole, in support of the Petition is supported sufficiently at this stage of the proceeding. Consequently, we do not give his testimony little to no weight because portions of it are repeated in the Petition.” slip op. at 44

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,929,512
• Datavant, Inc. v. Vigilytics LLCInstituted
  PTAB · Jul 12, 2024 · IPR2024-00381 · APJ Steven M Amundson · IPR · Institution

  The Board instituted IPR of claims 1–20 on all petition challenges after finding a reasonable likelihood of prevailing on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–20 in the ’012 patent on all challenges included in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking, and/or data records management.” Pet. 8. Petitioner also asserts that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. Dr. Clark’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 23. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’012 patent as well as the asserted references.” slip op. at 13

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

    “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor 4 For Exhibit 1010 (Plaintiffs’ Opening Claim Construction Brief), we cite to the page numbers of the brief rather than the header page numbers. Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 14

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

    “Alleged Reason to Combine the Teachings of the References Petitioner identifies a reason that would have prompted an ordinarily skilled artisan to combine Murphy’s teachings with Evenhaim’s teachings in the way Petitioner proposes, i.e., to provide “additional details about how to beneficially implement statistical de-identification.” See Pet. 15–16. Further, Petitioner asserts that an ordinarily skilled artisan would have had a “reasonable expectation of success” in combining the teachings of the references. Id. at 16. Dr. Clark’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 68–70. For instance, Dr. Clark testifies that Murphy describes “measures [that] would prevent a search for a single subject in Evenhaim to result in the identification of the subject’s medical records” and, therefore, “reduc[e] the risk of a HIPAA violation.” Id. ¶ 68. According to Dr. Clark, Murphy does so by recommending: (1) “at least a minimum amount of de-identified medical data (i.e., multiple patient records) such that the query complies with the HIPAA statistical requirements”; and (2) “maintaining a log of queries to ensure that a user does not repeatedly submit a query that returns the same number of results multiple times within a defined time period.” Id. Based on the current record, Petitioner establishes sufficiently that an” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,886,012
• Datavant, Inc. v. Vigilytics LLCInstituted
  PTAB · Jul 12, 2024 · IPR2024-00382 · APJ Brian J Mcnamara · IPR · Institution

  The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on all three asserted obviousness grounds.

  RulingsInstitution decision

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

    “Pet.”), to institute an inter partes review (“IPR”) of claims 1–22 (the “challenged claims”) of U.S. Patent No. 9,665,685 B1 (“the ’685 patent”). 35 U.S.C. § 311 (2018). Vigilytics LLC (“Patent Owner”) did not file a Preliminary Response. We have jurisdiction under 35 U.S.C. § 6. 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. slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “VII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 8 (citing Ex. 1003, Clark Decl. ¶¶ 20–25). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶¶ 20–25). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. The ’685 patent issued from a continuation application filed on April 22, 2016 (Ex. 1001, code (22)) and claims priority under 35 U.S.C. § 120 to an application filed on June 30, 2010. Id. at code (63), 1:7–20. We apply the pre-AIA version of the statutory basis for unpatentability. 2 U.S. Pat. No. 7,823,207 (Ex. 1005) 3 U.S. Pat. Appl. Publ. No. US 2007/0294111 (Ex. 1006) 4 U.S. Pat. Appl. Publ. No. US2002/0111833 (Ex. 1007) 5 U.S. Pat. No. 7,519,591 (Ex. 1008) 6 Shawn N. Murphy & Henry C. Chueh, A Security Architecture for Query Tools Used to Access Large Biomedical Databases, 2002 AMIA Annual Symposium Proceedings, 552–56 (2002) (Ex. 1009). we apply Petitioner’s description of a person of ordinary skill in the art, because it appears commensurate with the subject matter of the ’685 patent and the references.” slip op. at 7

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

    “2. Petitioner’s Contentions Concerning Motivation to Combine the Teachings of Evenhaim and Settimi Petitioner notes that, where Evenhaim sends healthcare data queries to various healthcare organizations, Settimi consolidates the information from various providers in a central repository for queries. Pet. 39 (citing Ex. 1005, 15:15–24, 16:5–21, Fig. 4; Ex. 1006, Figs. 1–2, ¶ 27; Ex. 1003, Clark Decl. ¶ 132). According to Petitioner, Settimi’s repository eliminates the need for conducting searches across different entities and uses a “common vocabulary” that make searching easier and more reliable. Id. (citing Ex. 1006 ¶¶ 9, 60–62; Ex. 1003, Clark Decl. ¶ 131). Petitioner further cites Settimi as disclosing generating encoded patient identifiers (EPIDs) for individuals, i.e., encrypted tokens, based, e.g., on a patient’s name or Social Security number, and querying the repository to obtain records without revealing the patient’s identity. Id. at 38 (citing Ex. 1006 ¶¶ 37–43; Ex. 1003, Clark Decl. ¶¶ 51–52, 130–131). According to Petitioner, a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Settimi to simplify search vocabulary, while still allowing for searches for specific patients. Id. at 39 (citing Ex. 1006 ¶¶ 9, 14, 17, 27, 39–40; Ex. 1003, Clark Decl. ¶¶ 131–132). For purposes of this Decision, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to apply the teachings of Evenhaim to a central repository, as disclosed in Settimi.” slip op. at 24

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,685

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