- Facebook, Inc. / Instagram, LLC et al. v. Blackberry LimitedInstitution deniedPTAB · Nov 5, 2019 · IPR2019-00923 · APJ Jacqueline T Harlow · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 15, 16, 19, 23, 24, or 27 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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.” Having considered the evidence and arguments of record, for reasons discussed below, we deny the petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of invention of the ’961 patent “would have possessed at least a bachelor’s degree in electrical engineering or computer science (or equivalent degree) and at least two years of experience with computer-based cryptographic techniques.” Pet. 6 (citing Ex. 1002 ¶¶ 11–13). Patent Owner does not address the requisite level of skill in its Preliminary Response. For purposes of this Decision, we adopt Petitioner’s undisputed definition of the level of ordinary skill in the art, as it is consistent with the” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“this proceeding. Pet. 16–17; Prelim. Resp. 14–15. The parties note, however, that in response to their dispute in the related district court action concerning the construction of the claim term “reducing mod q,” the district construed that term to mean “computing the remainder of dividing a value by q.” Prelim. Resp. 14 (citing Ex. 2002, 31–35); Pet. 16–17. We have considered the claim construction analysis and ruling of the district court, and agree that for purposes of this Decision, the district court’s interpretation of “reducing mod q” as meaning “computing the remainder of dividing a value by q” is reasonable. As such, we adopt that interpretation here. We note, however, that our conclusion that Petitioner has not established a reasonable likelihood of prevailing as to any of the challenged claims does not turn on any particular construction of “reducing mod q.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not adequately explain, in view of the gaps in DSS and Rose, why an ordinarily skilled artisan would have sought to modify DSS by applying Rose’s technique for eliminating modulo bias in basic random number generation to accept or reject a hashed random number, or to iteratively generate and hash a new random number after each rejection. Instead, Petitioner presumes, without sufficient explanation, that because Rose identifies a solution for addressing the modulo bias problem in basic random number generation, and because it was known at the time of invention of the ’961 patent that performance of a modulo operation on the output of a hash function, as disclosed by DSS, could create a bias towards lower values, an ordinarily skilled artisan would “have been motivated to use the technique in Rose to maintain a uniform distribution of random numbers over the range specified by q, resulting in a cryptographically stronger key k, in turn increasing the strength of the resulting digital signature scheme.” Pet. 43–44 (emphasis omitted). Petitioner’s presumption is insufficient, however, to support institution of inter partes review. For example, Petitioner’s inchoate explanation does not adequately address why an ordinarily skilled artisan would have understood that Rose’s method for avoiding modulo bias in basic random number generation––absent any hashing––would have been transferable to mitigate modulo bias in the selection of an output of a hash” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 7,372,961 - Micron Technology, Inc. v. North Star Innovations Inc.All claims unpatentablePTAB · Oct 24, 2019 · IPR2018-01004 · APJ Garth D Baer · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–3, 5, 7, 9, 10, and 14 as obvious over Callison; claims 4, 6, 8, 11–13 as obvious over Callison with the respective secondary reference.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that a person of ordinary skill in the art at the time of the ’526 patent would have had “at least a Bachelor of Science or Engineering degree in computer science, computer engineering, electrical engineering, or a closely related field, along with at least 5 years of experience in the field of computer systems and computer memory.” Pet. 20. In addition, according to Petitioner, “[a]n individual with an advanced degree in the above fields would require less (e.g., by 1 to 2 years) experience in the field of computer systems and computer memory.” Id. (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. PO Resp. 35. We agree with and adopt Petitioner’s proposal because it is consistent with the ’526 patent, as well as the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “memory controller bus operating independent of the system bus” Claim 1 requires a “memory controller bus operating independent of the system bus.” Petitioner proposes we construe this term to mean “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” Pet. 20. As Petitioner explains, the specification and claims support Petitioner’s construction. See id. at 19 (citing Ex. 1001, [57], 2:29–33, 11:42–47). Patent Owner does not challenge Petitioner’s construction. For the reasons stated in the Petition, we agree with Petitioner and construe “memory controller bus operating independent of the system bus” as “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” See Pet. 19–20.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“120 . . . arbitrates requests for the DRAM 116 from the various possible requestors in the DRAM interface 118.” Ex. 1005, 6:28–30; see PO Resp. 26 (quoting Ex. 1005, 6:28–30); id. at 40 (same); id. at 48 (same); Sur-reply 4 (same); id. at 5 (same); id. at 6 (same). But the requests and data that access Callison’s DRAM 116 (second memory) do not originate within DRAM interface 118 (second memory controller). Rather, they originate from host computer 101 (system bus master) and SCSI controllers 112A–E (first memory controllers), as the disputed limitation requires. See Ex. 1005, 2:32–34, 5:35–37, 4:36–51, 6:59–67, 10:4–20; see also Ex. 1040 ¶ 30. In other words, Callison’s host computer 101 and SCSI controllers 112A–E access DRAM 116 even if they use intermediary components in the process to do so. Patent Owner does not dispute Callison teaches host computer 101 (system bus master) initiates write operations to DRAM 116 (second memory) in which data from host computer 101 (system bus master) is written to DRAM 116 (second memory). See PO Resp. 42–43, 44; Sur-reply 8–10; Tr. 30:22–23. Patent Owner also does not dispute Callison discloses moving data from SCSI controllers 112A–E (first memory controllers) to DRAM 116 (second memory). See PO Resp. 46; Sur-reply 12–13. Because Callison further teaches “the DRAM arbiter 120 [arbitration logic] controls all requests to the DRAM 116 [second memory],” Ex. 1005, 6:52–53, we agree with Petitioner that Callison discloses “arbitration logic for arbitrating between the system bus master and the first memory controller for access to the second memory.” See Ex. 1040 ¶¶ 28–30.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“2. Obviousness of Claim 4 Based on Callison and Dipert Petitioner contends claim 4 would have been obvious over Callison and Dipert, in view of a skilled artisan’s knowledge. Pet. 58–61. Claim 4 depends from claim 3 and recites “wherein the first memory type comprises NAND Flash memory.” Petitioner explains that, while Callison does not disclose using NAND Flash memory as the first memory, Dipert “discloses NAND Flash memory and describes its advantages over hard disk drives.” Id. at 58. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to adapt Callison’s data processing system to use Dipert’s NAND Flash memory “because NAND Flash memory was known to have multiple advantages over hard disk drives, such as, for example, lower power consumption, faster read speed, and longer battery life.” Id. at 59 (citing Ex. 1011, 21, 43, 44; Ex. 1003 ¶¶ 122–124). Other than its argument addressing the arbitration logic for claim 1, addressed above, Patent Owner does not separately contest Callison’s and Dipert’s teachings related to claim 4. We agree with Petitioner that Dipert teaches the recited NAND Flash memory. In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its asserted combination of Callison and Dipert would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 3. Obviousness of Claim 6 Based on Callison and Prince Petitioner contends claim 6 would have been obvious over Callison and Prince, in view of a skilled artisan’s knowledge. Pet. 61–64. Claim 6 depends from claim 5 and recites “wherein the second memory type comprises synchronous dynamic random access memory.” Petitioner explains that, although Callison does not disclose using SDRAM as the second memory type, Prince teaches using SDRAM, which “is an improved alternative to, and offers multiple advantages over, conventional DRAM.” Id. at 62. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to modify Callison’s DRAM to use Prince’s SDRAM because “SDRAM was developed as a solution to address the problem of mismatch in speed between asynchronous DRAM and microprocessors,” and offers improved performance over DRAM “by freeing up the processor to do other tasks while the SDRAM is processing requests.” Id. at 62–63 (citing Ex. 1012, 12, 14; Ex. 1003 ¶¶ 137–142). Patent Owner does not separately contest Callison’s and Prince’s teachings related to claim 6. We agree with Petitioner that Prince teaches the recited “the second memory type comprises synchronous dynamic random access memory.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its proffered combination of Callison and Prince would have been obvious to one of ordinary skill in the art. See KSR, 550 U.S. at 418. 4. Obviousness of Claim 8 Based on Callison and Yun Petitioner contends claim 8 would have been obvious over Callison and Yun, in view of a skilled artisan’s knowledge. Pet. 64–71. Claim 8 depends from claim 1 and recites “wherein the first memory controller comprises a counter for counting a number of data portions transferred between the first memory and the second memory.” Petitioner explains that, although Callison does not expressly disclose the counter recited in claim 8, Yun “discloses a design of a SCSI controller that includes a transfer counter for counting data transferred through the SCSI controller.” Id. at 65. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to adapt Callison’s SCSI controllers 112A– E to include Yun’s counter because “Yun provides a new design of SCSI controller, which is compatible with a commercial SCSI controller and improves the performance of conventional SCSI controllers.” Id. at 68 (Ex. 1013, 1; Ex. 1003 ¶¶ 149, 150). Specifically, Petitioner notes, “Yun describes that the transfer counter, as part of the control circuit in the SCSI controller, is used to control and facilitate data transfers through the SCSI controller” by “signal[ing] the start and completion of a data transfer operation.” Id. at 70. Patent Owner does not separately contest Callison’s and Yun’s teachings related to claim 8. We agree with Petitioner that Yun teaches the recited “the first memory controller comprises a counter for counting a number of data portions transferred between the first memory and the second memory.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its proffered combination of Callison and Yun would have been obvious to one of ordinary skill in the art. See KSR, 550 U.S. at 418.” slip op. at 24
Patent outcomesUS 7,171,526 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,171,526 - Micron Technology, Inc. v. North Star Innovations Inc.All claims unpatentablePTAB · Oct 24, 2019 · IPR2018-01005 · APJ Garth D Baer · IPR · Final written decision
Claims 15–19 are unpatentable: claims 15, 17, and 18 as obvious over Callison, and claims 16 and 19 as obvious over Callison and Shanley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’526 patent would have had “at least a Bachelor of Science or Engineering degree in computer science, computer engineering, electrical engineering, or a closely related field, along with at least 5 years of experience in the field of computer systems and computer memory.” Pet. 19. In addition, according to Petitioner, “[a]n individual with an advanced degree in the above fields would require less (e.g., by 1 to 2 years) experience in the field of computer systems and computer memory.” Id. (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. PO Resp. 34. We agree with and adopt Petitioner’s proposal because it is consistent with the ’526 patent, as well as the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“operating independent of the system bus.” Petitioner proposes we construe this term to mean “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” Pet. 19. As Petitioner explains, the specification and claims support Petitioner’s construction. See id. at 18 (citing Ex. 1001, [57], 2:29–33, 11:42–47). Patent Owner does not challenge Petitioner’s construction. For the reasons stated in the Petition, we agree with Petitioner and construe “memory controller bus operating independent of the system bus” as “a bus for 4 A recent amendment to this rule does not apply here because the Petition was filed before November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R. pt. 42 (2019)) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018). transferring data between two or more memory controllers where said data transfer does not use the system bus.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner asserts that it would have been obvious to one skilled in the art to include Shanley’s DMA circuitry coupled to the system bus because “Callison . . . does not provide extensive detail on how to implement an EISA bus and associated components,” whereas “Shanley provides that detailed information, that is, the architecture of an EISA system that includes an EISA bus and other associated components in a computer system.” Id. at 55. Petitioner explains further that one skilled in the art would also have been motivated to use Shanley’s EISA system (including DMA circuitry) for Callison’s host computer to achieve the benefits Shanley describes, including “parallel processing,” which is “extremely efficient” and “a low-cost alternative to intelligent bus master cards.” Id. at 56 (quoting Ex. 1007, 22, 29). Patent Owner does not separately contest Callison’s and Shanley’s teachings related to claim 16. We agree with Petitioner that Shanley teaches both “direct memory access (DMA) circuitry coupled to the system bus” and “a processor coupled to the system bus.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning that supports the legal conclusion that its proffered combination—i.e., adapting Callison’s host computer in view of Shanley’s teachings on EISA systems—would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“120 . . . arbitrates requests for the DRAM 116 from the various possible requestors in the DRAM interface 118.” Ex. 1005, 6:28–30; see PO Resp. 25 (quoting Ex. 1005, 6:28–30); id. at 38 (same); id. at 46 (same); Sur-reply 2 (same); id. at 6 (same); id. at 7 (same). But the requests and data that access Callison’s DRAM 116 (second memory) do not originate within DRAM interface 118 (second memory controller). Rather, they originate from host computer 101 (system bus master) and SCSI controllers 112A–E (first memory controllers), as the disputed limitation requires. See Ex. 1005, 2:32–34, 5:35–37, 4:36–51, 6:59–67, 10:4–20. In other words, Callison’s host computer 101 and SCSI controllers 112A–E access DRAM 116 even if they use intermediary components in the process to do so. Patent Owner does not dispute Callison teaches host computer 101 (system bus master) initiates write operations to DRAM 116 (second memory) in which data is written from host computer 101 (system bus master) to DRAM 116 (second memory). See PO Resp. 40–41, 42; Sur-reply 9–10; Tr. 30:22–23. Patent Owner also does not dispute Callison discloses moving data from SCSI controllers 112A–E (first memory controllers) to DRAM 116 (second memory). See PO Resp. 44; Sur-reply 13–14. Because Callison further teaches “the DRAM arbiter 120 [arbitration logic] controls all requests to the DRAM 116 [second memory],” Ex. 1005, 6:52–53, we agree with Petitioner that Callison discloses “arbitration logic, coupled to the second memory controller, said arbitration logic arbitrating between the system bus master and the first memory controller for access to the second memory.”” slip op. at 16
Patent outcomesUS 7,171,526 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,171,526 - Acronis, Inc. v. Realtime Data LLCAll claims unpatentablePTAB · Sep 24, 2019 · IPR2018-00706 · APJ Garth D Baer · IPR · Final written decision
Claims 12–14, 20, and 21 are unpatentable as obvious over Dawson and Gormish because their combined teachings meet the claimed limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that “[a] person of ordinary skill in the art at the time of the alleged invention of the ’204 Patent would have had at least a bachelor’s degree, or equivalent, in Computer and Electrical Engineer[ing], Computer Science, Engineering, or a closely related program of study, and one to two years of industry or graduate experience.” Pet. 5 (citing Ex. 1002 ¶¶ 11–13). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. We agree with and adopt Petitioner’s proposal because it is consistent with the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION Petitioner proposes that we construe the terms “recognizing” and “analyzing” of claims 12 and 21 as not requiring an active step of directly analyzing data within data blocks. Pet. 5. Patent Owner asserts that the terms do not require construction to resolve the parties’ dispute. Resp. 4. We agree with Patent Owner that no express claim construction is necessary 1 U.S. Patent No. 5,553,160 (issued Sept. 3, 1996) (Ex. 1003, “Dawson”). 2 U.S. Patent No. 5,912,636 (issued June 15, 1999) (Ex. 1004, “Gormish”). to determine whether 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
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In addition, the record supports that one skilled in the art would have had a reasonable expectation of success in combining the asserted teachings to achieve the claimed timing and compression ratio constraints. We credit Dr. Boncelet’s testimony that “[a] person of ordinary skill in the art certainly could use Gormish and . . . have a reasonable expectation that Gormish would work well in the Dawson framework.” Ex. 2005, 21:22–22:1; see id. at 88:19–89:1 (explaining that “as one of ordinary skill in the art, I would have a reasonable expectation that the combination of Dawson and Gormish would meet the stated goals of Dawson, to be able to transmit the images faster compressed than uncompressed”); id. at 70:16–22 (explaining that Dawson “chose the 4K number because that was — given the hardware available to them at the time, that was probably where the break-even point was”); see also Ex. 1002 ¶¶ 65–69 (describing the asserted combination and explaining how and why a skilled artisan would have combined the references). The prior art supports Dr. Boncelet’s assertion. Dawson notes that “[a]ny of a wide variety of data compression algorithms can be used,” Ex. 1003, 12:22–24, while Gormish states that its finite state machine can be implemented as either a lossless or lossy compressor, Ex. 1004, 20:34–38. Thus, as Dr. Boncelet testified, “Dawson allows the choice of what kind of compressor to use, either lossy or lossless, whether it’s Huffman coding, arithmetic coding, Gormish, LZW, JPEG, et cetera . . . . The system still works with the existing thresholds and with Gormish.” Ex. 2005, 55:25– 56:9. We note the ’204 patent includes none of the encoder speed or communication channel speed metrics that Patent Owner asserts are missing from Dawson. In addition, Dawson’s methods of achieving the timing and compression ratio constraints do not depend on the compression implementation details that Patent Owner contends are missing. To the contrary, Dawson’s algorithm for achieving at least a 4:1 compression ratio looks only to post compression results, while its algorithm for achieving the timing constraint looks only to pre-compression file size. See Ex. 1003, Fig. 4 (steps 405, 460). Thus, both algorithms would be unaffected by the specific encoder employed or the type of data to be compressed. In light of the evidence of record, we find Petitioner adequately demonstrates how the asserted prior art would be combined and that one skilled in the art would have a reasonable expectation of success in doing so.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 8,717,204 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,717,204 - Jand, Inc. D/B/A Warby Parker v. Visibly, Inc. (F/K/A Opternative, Inc.)All claims unpatentablePTAB · Sep 16, 2019 · IPR2018-00802 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–9, 11–17, and 19–22 were held unpatentable as obvious; the contingent motion to amend with substitute claims 23–37 was denied.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“arguments of the parties and the supporting evidence, we find that Petitioner has demonstrated by a preponderance of the evidence that all challenged claims 1–9, 11–17, and 19–22 of the ’378 patent are unpatentable. In addition, we deny Patent Owner’s Contingent Motion to Amend to replace claims 1–22 with substitute claims 23–37.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal quotation marks omitted); see also KSR, 550 U.S. at 418 (explaining that for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). A motivation to combine the teachings of two references can be “found explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (citation omitted). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“F. Conclusion Because Petitioner’s § 112(b) and 103(a) arguments are dispositive on the Contingent Motion to Amend, we decline to address Petitioner’s additional arguments regarding the patentability of substitute claims 23–37. Opp. Amend 1–6, 17–19. For the foregoing reasons, we determine Petitioner has demonstrated by preponderance of the evidence that proposed substitute claims 23–37 are unpatentable.” slip op. at 84
- ExcludeMotion to exclude, deniedDenied
“1048 in this Decision. Accordingly, Patent Owner’s Motion to Exclude these exhibits is denied as moot.” slip op. at 85
Patent outcomesUS 9,504,378 unpatentable§ 103 obviousnesscites KSR · Graham · NautilusPatents in suitUS 9,504,378 - Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
Patent outcomesUS 9,868,985 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,868,985 - Dispersive Networks, Inc. v. Nicira, Inc.Rehearing grantedPTAB · Jul 17, 2019 · PGR2018-00063 · APJ Debra K Stephens · PGR · Rehearing
Patent Owner’s rehearing request was granted as to claim 7, which was removed from institution under § 112(b); institution on claims 1–6 and 8–11 remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
NonePatents in suitUS 9,722,815
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.