- Kingston Technology Company, Inc. v. Catr Co. Ltd.Some claims unpatentablePTAB · May 10, 2016 · IPR2015-00559 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 9, 14, 17, 19, and 21–23 are unpatentable as obvious over Matsumiya and Deng and over Wu and Hoogesteger; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“1. Level of Ordinary Skill in the Art In our Final Written Decision in IPR 149, we found “that one of ordinary skill in the art would have had a degree in mechanical engineering or industrial design, but also a general understanding of the use of electrical components, which may be incorporated in mechanical designs.” IPR 149 Decision 23. The parties present the same arguments here, with respect to their views of the level of ordinary skill in the art, as they did in IPR 149. Accordingly, for the reasons discussed in our Final Written Decision in IPR 149 we adopt the same level of skill here. Id. at 22–23.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Second, Dr. Wolfe testified that Matsumiya discloses “a shaft” that protrudes from each side of the case. Ex. 1016 ¶ 97. On cross-examination, however, Dr. Wolfe admitted that while Matsumiya could disclose a “split axle,” “normally, you’d presume that it’s a through axle.” Ex. 2012, 85:9– 18. Dr. Wolfe did not explain in his direct testimony how either an axle or split axle would be integrated with or attached to at least one side of the case. Third, Petitioner relied on the express disclosure of Matsumiya, not a modification of Matsumiya, as teaching this element of the claims. See Pet. 16 (relying only on Matsumiya’s disclosure). In its Reply, Petitioner asserts, for the first time, that Matsumiya “could also use a snap hinge,” pointing to Professor Visser’s cross-examination testimony. Reply 13 (citing Ex. 1050, 127:9–11). Professor Visser’s testimony, however, does not support Petitioner’s argument. Professor Visser testified that Matsumiya does not show a snap-on hinge, and that a snap-on hinge would not have the same functionality as an axle. Ex. 1050, 127:18–21. He also testified that the two concentric rings on the arms of Matsumiya are inconsistent with a snap-on hinge. Id. at 128:17–20. Thus, the issue before us is not whether it would have been obvious to modify Matsumiya to include a snap-on hinge or hinge protuberance on the side of the case because that was not the basis set forth in the Petition and upon which we instituted review; rather, the issue is whether Petitioner has shown that Matsumiya discloses a hinge element or hinge protuberance integrated with or attached to at least one side of the case. In light of the record before us, and as detailed in the discussion above, we conclude that Petitioner has not shown that Matsumiya discloses a hinge element or a hinge protuberance “formed on at least one side of the case.” We find that Petitioner has failed to present sufficient evidence to show that Matsumiya discloses this element of the claims, and we find Patent Owner’s evidence in the form of Dr. Wolfe’s cross-examination testimony and Professor Visser’s testimony more persuasive.” slip op. at 22
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“Id. at 1:14–23. Accordingly, we find that Kindig’s field of endeavor is hinged enclosures to house appliances that make noise when operated. The ’544 patent states that “[t]he present invention relates to a flash memory apparatus, and more particularly to a flash memory apparatus, wherein a cover is not completely separated from the main body upon being in use so that lost [sic] of the cover is prevented.” Ex. 1001, 1:8–11. The ’544 patent is largely directed to a cover that rotates with respect to a case (as is evident from the parties’, and consequently our, extensive discussion of the hinged connection (i.e., hinge protuberances and hinge holes)), but is not readily disconnected. In fact, the ’544 patent discloses the recited “hooking groove” and “hooking threshold” specifically to prevent the hinge hole from being easily detached from the hinge protuberance. Id. at 3:36–43 (“Furthermore, a hooking groove 34 is preferably formed on the lower periphery of the hinge protuberance 33. A hooking threshold 45 is hooked on the hooking groove 34 and is preferably formed on a rim confining the hinge hole 41 in order to prevent the hinge hole 41 from being easily detached from the hinge protuberance 33 after joining of the hinge hole 41 and the hinge protuberance 33.”). Thus, we find that the ’544 patent’s field of endeavor is hinge assemblies for a flash memory apparatus.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, Petitioner asserts that Kindig’s hinge connection “would advantageously help to retain connection between the cover of Matsumiya and the memory card,” id. at 25, but Petitioner has not shown that Matsumiya fails to retain the connection between case and cover or has difficulty doing so. Rather, from our review the record supports that Matsumiya’s cover is securely attached to the case. Additionally, we are unaware of any teaching in Matsumiya of disconnecting the cover from the case. Similarly, the ’544 patent aims to avoid disconnecting the cover from the case, as discussed above. Kindig, however, is directed to an easily detachable cover. Accordingly, Petitioner’s reason—as to why one of ordinary skill in the art would have been prompted to modify Matsumiya by adding the elements of claim 13 from Kindig—lacks a rational underpinning. 3. Conclusion of Obviousness For the foregoing reasons, after consideration of the entire record, we” slip op. at 35
Patent outcomesUS 6,926,544 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,926,544 - LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentablePTAB · May 9, 2016 · IPR2015-01400 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable under §103; the other challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner further contends that WINS discloses that NetBIOS is incorporated into the WINS system and expressly discloses that WINS should be combined with NetBIOS. Id. at 37–38 (citing 198 Ex. 1002 ¶ 81; Ex. 1003, 65). Accordingly, Petitioner concludes that one of ordinary skill in the art would have known about and been motivated to combine the references. Id. Petitioner further contends that a person with ordinary skill in the art would have been motivated similarly to combine WINS and NetBIOS with Pinard because Pinard discloses a telephony application with a graphical user interface that allows a user to establish and manage telephone calls. Id. at 38–39. Petitioner specifically argues that Pinard references Windows 3.1 and WINS references Windows 3.11 and Windows NT, and, therefore, a person with ordinary skill in the art would have known how to adapt the graphical user interfaces in Pinard to the system in WINS. Id. We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by WINS, and Pinard’s program is compatible with a Windows operating system, and, therefore, a person with ordinary skill in the art would have readily combined the disclosures of WINS, NetBIOS, and Pinard.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.”” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363. Petitioner and Patent Owner argue that the limitations “on-line status” and “is accessible” have the same meaning as “is connected to the computer network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36; 198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is connected to a computer network,” the “on-line status” and “is accessible” of the second process are recited in the present tense, and therefore must be claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter partes review.” Straight Path, 806 F.3d at 1363. We similarly do not determine whether this claim limitation is supported by the specifications of the ʼ704, ʼ469, and ʼ121 patents. determined at the time of the querying whether the second process “is accessible” or selecting of the process having an “on-line status.” Therefore, we construe “on-line status” and “is accessible” as having the same meaning as “is connected to the computer network.”” slip op. at 12
Patent outcomesUS 6,009,469 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,009,469 - LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentablePTAB · May 9, 2016 · IPR2015-01397 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable as obvious; all other challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“2. Section 315(b) Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceedings is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363. Petitioner and Patent Owner argue that the limitations “on-line status” and “is accessible” have the same meaning as “is connected to the computer network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36; 198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is connected to a computer network,” the “on-line status” and “is accessible” of the second process are recited in the present tense, and therefore must be claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter partes review.” Straight Path, 806 F.3d at 1363. We similarly do not determine whether this claim limitation is supported by the specifications of the ʼ704, ʼ469, and ʼ121 patents. determined at the time of the querying whether the second process “is accessible” or selecting of the process having an “on-line status.” Therefore, we construe “on-line status” and “is accessible” as having the same meaning as “is connected to the computer network.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of WINS and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Pinard, and claim 5 of the ’469 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Palmer. 198 Pet. 37–47, 54‒ 55, 58‒59. For claims 1, 2, and 5, Petitioner provides citations for where each claim limitation is disclosed by WINS and NetBIOS. Id. Petitioner also articulates reasoning with rational underpinnings why a person of ordinary skill in the art at the time of the invention would have combined the teachings of WINS and NetBIOS. Id. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We determine the record supports Petitioner’s contentions and adopt Petitioner’s contentions discussed below as our own. Furthermore, we have reviewed the Petition and supporting evidence and determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ’469 patent would have been obvious over WINS and NetBIOS. See id.” slip op. at 25
Patent outcomesUS 6,131,121 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121 - LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentablePTAB · May 9, 2016 · IPR2015-01398 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server.” slip op. at 23
Patent outcomesUS 6,108,704 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,108,704 - LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentablePTAB · May 9, 2016 · IPR2015-00196 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent were held unpatentable as obvious; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“2. Section 315(b) Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceedings is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363. Petitioner and Patent Owner argue that the limitations “on-line status” and “is accessible” have the same meaning as “is connected to the computer network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36; 198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is connected to a computer network,” the “on-line status” and “is accessible” of the second process are recited in the present tense, and therefore must be claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter partes review.” Straight Path, 806 F.3d at 1363. We similarly do not determine whether this claim limitation is supported by the specifications of the ʼ704, ʼ469, and ʼ121 patents. determined at the time of the querying whether the second process “is accessible” or selecting of the process having an “on-line status.” Therefore, we construe “on-line status” and “is accessible” as having the same meaning as “is connected to the computer network.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of WINS and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Pinard, and claim 5 of the ’469 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Palmer. 198 Pet. 37–47, 54‒ 55, 58‒59. For claims 1, 2, and 5, Petitioner provides citations for where each claim limitation is disclosed by WINS and NetBIOS. Id. Petitioner also articulates reasoning with rational underpinnings why a person of ordinary skill in the art at the time of the invention would have combined the teachings of WINS and NetBIOS. Id. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We determine the record supports Petitioner’s contentions and adopt Petitioner’s contentions discussed below as our own. Furthermore, we have reviewed the Petition and supporting evidence and determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ’469 patent would have been obvious over WINS and NetBIOS. See id. Petitioner also contends that claim 3 of the ʼ121 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS. 196 Pet. 29–38. Petitioner provides citations for where each claim limitation is taught by WINS and NetBIOS. Id. Petitioner also articulates reasoning with rational underpinnings why a person of ordinary skill in the art at the time of the invention would have combined the teachings of WINS and NetBIOS. Id. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d at 988). We determine the record supports Petitioner’s contentions and adopt Petitioner’s contentions discussed below as our own. Furthermore, we have reviewed the Petition and supporting evidence and determine that Petitioner has shown by a preponderance of the evidence that claim 3 of the ’121 patent would have been obvious over WINS and NetBIOS. See id.” slip op. at 25
Patent outcomesUS 6,131,121 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121 - LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentablePTAB · May 9, 2016 · IPR2015-00209 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of the ’704 patent; claims 3, 6, 9, 10, 14, 17, and 18 of the ’469 patent; and claims 4, 6–14 of …
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of WINS and NetBIOS fails to teach or” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner further contends that WINS discloses that NetBIOS is incorporated into the WINS system and expressly discloses that WINS should be combined with NetBIOS. Id. at 37–38 (citing 198 Ex. 1002 ¶ 81; Ex. 1003, 65). Accordingly, Petitioner concludes that one of ordinary skill in the art would have known about and been motivated to combine the references. Id. Petitioner further contends that a person with ordinary skill in the art would have been motivated similarly to combine WINS and NetBIOS with Pinard because Pinard discloses a telephony application with a graphical user interface that allows a user to establish and manage telephone calls. Id. at 38–39. Petitioner specifically argues that Pinard references Windows 3.1 and WINS references Windows 3.11 and Windows NT, and, therefore, a person with ordinary skill in the art would have known how to adapt the graphical user interfaces in Pinard to the system in WINS. Id. We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by WINS, and Pinard’s program is compatible with a Windows operating system, and, therefore, a person with ordinary skill in the art would have readily combined the disclosures of WINS, NetBIOS, and Pinard.” slip op. at 30
Patent outcomesUS 6,108,704 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,108,704 - LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentablePTAB · May 9, 2016 · IPR2015-00198 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable over WINS and NetBIOS; the other challenged claims were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363. Petitioner and Patent Owner argue that the limitations “on-line status” and “is accessible” have the same meaning as “is connected to the computer network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36; 198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is connected to a computer network,” the “on-line status” and “is accessible” of the second process are recited in the present tense, and therefore must be claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter partes review.” Straight Path, 806 F.3d at 1363. We similarly do not determine whether this claim limitation is supported by the specifications of the ʼ704, ʼ469, and ʼ121 patents. determined at the time of the querying whether the second process “is accessible” or selecting of the process having an “on-line status.” Therefore, we construe “on-line status” and “is accessible” as having the same meaning as “is connected to the computer network.”” slip op. at 12
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“year after Petitioner was served a complaint filed with the United States International Trade Commission (“ITC”). PO Resp. 4‒6. Petitioner responds that § 315(b) only applies to service of a complaint in a civil action and not to administrative proceedings such as an ITC investigation. Pet. Reply 5‒6 (citing Alcon Research, Ltd. v. Dr. Joseph Neev, Case IPR2014-00217, Paper 21, 9 (PTAB May 9, 2014); Amkor Tech., Inc. v. Tessera, Inc., Case IPR2013-00242, Paper 98, slip op. at 10–12 (PTAB Jan. 31, 2014)). Petitioner specifically argues that the Board has rejected similar arguments as those raised by Patent Owner and held that § 315(b) only covers civil actions brought in federal district court. Paper 17, 3‒5 (citing Amkor, Paper 98, 7–8). Patent Owner argues that Amkor is directed to administrative proceedings such as arbitration, and any discussion in Amkor regarding an ITC investigation is not relevant. Prelim. Resp. 13, n. 1. Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.”” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Pinard, and claim 5 of the ’469 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Palmer. 198 Pet. 37–47, 54‒ 55, 58‒59. For claims 1, 2, and 5, Petitioner provides citations for where each claim limitation is disclosed by WINS and NetBIOS. Id. Petitioner also articulates reasoning with rational underpinnings why a person of ordinary skill in the art at the time of the invention would have combined the teachings of WINS and NetBIOS. Id. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We determine the record supports Petitioner’s contentions and adopt Petitioner’s contentions discussed below as our own. Furthermore, we have reviewed the Petition and supporting evidence and determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ’469 patent would have been obvious over WINS and NetBIOS. See id. Petitioner also contends that claim 3 of the ʼ121 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS. 196 Pet. 29–38. Petitioner provides citations for where each claim limitation is taught by WINS and NetBIOS. Id. Petitioner also articulates reasoning with rational underpinnings why a person of ordinary skill in the art at the time of the invention would have combined the teachings of WINS and NetBIOS. Id. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d at 988). We determine the record supports Petitioner’s contentions and adopt Petitioner’s contentions discussed below as our own. Furthermore, we have reviewed the Petition and supporting evidence and determine that Petitioner has shown by a preponderance of the evidence that claim 3 of the ’121 patent would have been obvious over WINS and NetBIOS. See id.” slip op. at 25
Patent outcomesUS 6,009,469 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,009,469 - Micron Technology, Inc. v. Limestone Memory Systems LLCInstitution deniedPTAB · Apr 21, 2016 · IPR2016-00093 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Micron did not show a reasonable likelihood that claims 1 and 2 were obvious over Watanabe and Iwama.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“only if “the information presented in the [P]etition . . . and any [Preliminary 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 [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’504 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’504 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Although Petitioner and Patent Owner present proposed constructions for several claim terms, no terms require express construction for purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, Petitioner contends that its proposed substitution “would not interfere with other operations” and cites to paragraph 49 of the Baker Declaration for support. Pet. 26 (citing Ex. 1003 ¶ 49). Paragraph 49 of the Baker Declaration generally supports Petitioner’s argument regarding the proposed substitution, even going as far as to testify that “[s]uch a simple substitution is reflected in the figures above.” Ex. 1003 ¶ 49 (referring to the same figure, reproduced above, from page 38 of the Petition). Neither that paragraph, however, nor, from our independent review, any other testimony by Dr. Baker, supports directly Petitioner’s argument that the proposed substitution “would not interfere with other operations.” Additionally, Petitioner’s argument based on Watanabe’s Figure 28 and Iwama’s Figure 2, reproduced above, and Dr. Baker’s testimony that “[s]uch a simple substitution is reflected in the figures above,” fails to account for making any additional modifications to Watanabe, instead choosing to rely on a picture-is-worth-a-thousand-words approach. For the reasons discussed above, Petitioner has not provided sufficient support for its argument that the substitution is so simple that it would not interfere with other operations and has not explained the other modifications that would be needed to accommodate the change. Accordingly, Petitioner’s argument that this is nothing more than a simple substitution is not persuasive on the current record.” slip op. at 15
- Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable
“Third, Petitioner contends that “the decision to use the circuit proposed by Watanabe or the circuit proposed by Iwama is nothing more than a design choice.” Pet. 27 (citing Ex. 1003 ¶¶ 50–52). Petitioner asserts that it was well known, and conventional, that cascade registers could be used to convert serial data to parallel data because “[b]oth circuits address the same problem and provide the same result – parallel data for a burst operation.” Id. (citations omitted). Patent Owner asserts that “[a]lthough shift registers were known structures at the time of the invention, that does not mean that it was a simple ‘design choice’ to use write register tri-state buffers instead of a shift register at the particular portion of Watanabe’s circuit.” Prelim. Resp. 47. Patent Owner points out that Watanabe “discloses a cascading shift register for other portions of the disclosed circuit relating to the timing signals – not the data – and uses that structure to generate timing pulses GW used to control the input buffer circuit.” Id. (citing Ex. 1005, Figs. 15, 25). Patent Owner contends that “Watanabe’s data circuit has a fundamentally different structure that specifically does not work with the shift register as proposed in the Petition. . . . [and t]he shift register is actually an unavailable choice,” in light of Patent Owner’s argument regarding inoperability. Id. In light of our discussion above with respect to Petitioner’s proposed substitution, we do not find Petitioner’s design-choice argument persuasive. Additionally, as explained by Patent Owner, Watanabe’s GW gates function in a manner conducive to Watanabe’s latency goals. On this record, Petitioner has not explained sufficiently how Iwama’s cascade register would similarly function to accomplish the same specific result, beyond simply converting serial data to parallel data.” slip op. at 16
Claim construction§ 103 obviousnessPatents in suitUS 5,805,504 - Micron Technology, Inc. v. Limestone Memory Systems LLCInstitution deniedPTAB · Apr 12, 2016 · IPR2016-00094 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Micron did not show a reasonable likelihood of proving claims 6–15 obvious over McAdams and Minami; claims 1–3 and 5 were disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“7. Summary Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 6 of the ’441 patent is unpatentable. B. Obviousness of Claims 7–15 over McAdams and Minami Petitioner asserts that a combination of the teachings of McAdams and Minami would have rendered the subject matter of claims 7–15 obvious to one of ordinary skill in the art at the time of the invention. Pet. 44–60. Each of claims 7–15 depends, directly or indirectly, from independent claim 6. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 7–15 of the ’441 patent are unpatentable.” slip op. at 16
- Adverse judgmentOther
“disclaimed claims 1–3 and 5 under 35 U.S.C. § 253(a). Prelim. Resp. 10. As evidence of that disclaimer, Patent Owner filed an Acknowledgement Receipt. Ex. 2001. 37 C.F.R. § 42.107(e) provides: “The patent owner may file a statutory disclaimer under 35 U.S.C. 253 (a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent.” Patent Owner’s disclaimer is in compliance with 37 C.F.R. § 1.321(a). Accordingly, we decline to institute an inter partes review as to claims 1–3 and 5.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION A. Legal Standard Petitioner proposes that we construe the claim term “transfer gate” to mean “logic that transfers the logic value of a signal.” Pet. 10. For the purposes of this Decision, we are not persuaded that “transfer gate” requires express construction, because even if we were to adopt Petitioner’s proffered construction, Petitioner has not established that it is reasonably likely to succeed in showing that the challenged claims are unpatentable. 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 5
- Skill levelSkill level board ownOther
“4. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, we determine that no express finding is necessary, on this record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. 3 Bold omitted from reference numerals in patents throughout. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,894,441 - PTAB · Mar 4, 2016 · IPR2014-01368 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not disclose the required current connection status.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time the query is transmitted to the server.” Id. at 1363.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25
- BurdenFwd mixedUnpatentable
“8. Conclusion We have reviewed the Petition and supporting evidence and find that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent are obvious over Microsoft Manual and NetBIOS, and claim 10 is unpatentable because it depends from a cancelled claim. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 5, and 10 of the ʼ469 patent are unpatentable.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121
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.