- Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision
Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified that he did not read the prosecution history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other statements that demonstrate that he reviewed the prosecution history (id. at 154:11–20). In addition, Mr. McNamara’s statement was during a lengthy deposition approximately nine months after Mr. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in view of the prosecution history of the ’130 patent were “automatically” and “automatically received,” which neither party contests. Compare PO Resp. 10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not persuaded that Mr. McNamara’s statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at issue in this proceeding that overlap with claim terms defined during the prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020, 26.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37
Patent outcomesUS 6,549,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision
Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s argument to be persuasive. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third (communications) device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19
Patent outcomesUS 6,542,077 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,077 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01477 · APJ Howard B Blankenship · IPR · Final written decision
Claims 30, 33, 53, and 85–88 are unpatentable by disclaimer; claims 33 and 90 are also unpatentable as obvious over Fuhr, but not anticipated by Goldberg.
RulingsFinal written decision- Adverse judgmentAdverse judgmentUnpatentable
“Patent Owner states that it “hereby disclaims claims 30, 53, and 85‒ 88.” PO Resp. 21. Patent Owner does not present any arguments in its Patent Owner Response directed to those claims. A review of the USPTO electronic file of the ʼ046 patent indicated that Patent Owner had not filed a statutory disclaimer. In an Order entered December 7, 2016, we notified Patent Owner that if it failed to file a notice in this proceeding indicating that it has filed a statutory disclaimer for claims 30, 53, and 85‒88 in the patent, the claims will be held unpatentable. Paper 28. The period provided for filing of such notice has passed without response from Patent Owner. See id. at 2. Accordingly, we determine that claims 30, 53, and 85‒88 are 1 Time Warner Cable Inc. and iControl Networks, Inc. also were named as petitioners. We granted a joint motion to terminate the inter partes review with respect to those parties. Paper 22. unpatentable. The patentability of claims 33 and 90 remain for consideration in this Final Written Decision.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“objections with respect to Mr. Bennett’s testimony, nor sought to preclude him from testifying as an expert witness. In any event, to testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We give appropriate weight to the testimony of Mr. Bennett as an individual with more than 30 years of industry experience in computers and networking, including the development of real-time video collaboration tools (Ex. 1003, 2) and software for a video-on-demand server (Ex. 1002 ¶ 12). See generally Ex. 1002 ¶¶ 5‒12; Ex. 1003 (CV).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We construe “video information” to mean “data or information containing, pertaining to or representing, an image or images or a photograph.” PO Resp. 12; see also Prelim. Resp. 25. Patent Owner submits that “real-time video information” should be construed as synonymous with “live video information,” with each meaning “video information” that is broadcast or transmitted as the video information event occurs. PO Resp. 13‒14. Patent Owner refers to a Memorandum and Order from the U.S. District Court for the Southern District of New York, which construes those terms in the ʼ046 patent. Id. (citing Ex. 2013, 17). We adopt the construction set forth by the District Court and as advocated by Patent Owner. Petitioner does not oppose that construction. See Pet. Reply 2 (“Petitioners have no issue with the wording of this construction, provided it is understood that the construction does not require instantaneous transmission of video information.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.” RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). “The identical invention must be shown in as complete detail as is contained in the patent claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The expert testimony upon which the Petition relies does not provide sufficient support for anticipation. Mr. Bennett submits that the camera disclosed in Goldberg “is capable of capturing and transmitting individual images, as well as live video.” Ex. 1002 ¶ 38 (emphasis added). His Declaration does not allege that the artisan would understand that Goldberg discloses a system that includes live video. Further, Goldberg’s description of “two possible fixes” for a live video feed (Ex. 1006, 210 n.1) is in the form of an invitation for the artisan to investigate possible ways to supply a live video feed, as opposed to describing an invention in terms such that the ordinary artisan would be placed in possession of it. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))). Goldberg, however, describes a system having “a limited level of teleoperation.” Ex. 1006, 210 (§ 2). slip op. at 11
Patent outcomesUS 6,587,046 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,587,046 - Finjan Holdings, Inc. v. Sophos LimitedAll claims unpatentablePTAB · Nov 30, 2016 · IPR2015-01405 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1, 11, and 12 are unpatentable under § 103 over Lee and Cooley (claims 1 and 12), and Lee, Cooley, and Tuvell (claim 11); also over Farley and Cooley (claims 1 and 12), and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On this record, we determine that Petitioner’s construction is consistent with the plain and ordinary meaning of “ranked” and requires no construction.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“party is definitive because the way the evidence is presented is contradictory. We begin our analysis with the words used in the claims. “The usage of the disputed claim terms in the context of the claims as a whole also informs the proper construction of the terms.” Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1351 (Fed. Cir. 2003) (citations omitted). Claims 1 and 12 recite that “malicious behavior indications” are compared to “phenotypes,” as construed above. As a result of the comparison, the phenotypes “are ranked to create increasing levels of confidence that a runtime object is executing a behavior pattern comparable to a known family of malware.” It is only in the context of the comparison that the ranking occurs. There is no explanation in the specification or otherwise as to why the phenotypes would be ranked apart from and prior to the comparison being made. The reason for the comparison between the “malicious behavior indications” and the “phenotypes” is to identify the most problematic phenotype, which is “ranked” according to how similar it is to the “executing computer program.” To the extent there is a grammar issue raised, we agree with Petitioner’s evidence that “the past participle form of a verb merely ‘signifies ‘perfectiveness’ or completion, but is not restricted to past time.’” Pet. Reply 4 (citing Ex. 1023, 282, 286–87; Ex. 1024, 409). This is consistent with our plain and ordinary meaning analysis immediately above.” slip op. at 11
- Skill levelSkill level board ownOther
“substantially similar. Petitioner asserts a person of ordinary skill would have an undergraduate degree “in Computer Science or a comparable subject and at least five years of work experience in either the field of intrusion detection or in malware detection; or (ii) an advanced degree (or equivalent) in Computer Science or a comparable subject and at least one year of post-graduate research or work experience in either the field of intrusion detection or in malware detection.” Pet. 17–18 (citing Ex. 1020 ¶ 33). Patent Owner’s proposed level of ordinary skill is a “bachelor’s degree or the equivalent in computer science, computer engineering, or a related degree, and three to four years of experience in the field of Internet software, including anti-virus and other malware, or equivalent work experience.” PO Resp. 8–9 (citing Ex. 2001 ¶¶ 17–20). Both proposals are similar in requiring at least an undergraduate degree and between three to five years of experience. Accordingly, we find that the person of ordinary skill has an undergraduate degree in computer science, computer engineering, or a related or comparable degree and at least four years of work experience in the field of Internet software, including anti-virus or intrusion or malware, detection, or equivalent work experience.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We are not persuaded by Dr. Sauer’s testimony that substituting Lee’s behavior analysis for Cooley’s would not have been obvious to a person of ordinary skill in the art. Ex. 2001 ¶ 58. Dr. Sauer’s opinion is based on the length of time difference between Lee and Cooley and the related “worst of all” problem that occurs “long after startup.” Ex. 2001 ¶¶ 56–58; see PO Resp. 19–20. Neither Patent Owner nor Dr. Sauer persuades us that the length of time differences between Lee and Cooley would have been of any significant consequence to the motivation of the person seeking to solve the problem of detecting malware. Thus, we determine that Dr. Sauer’s conclusion is entitled to little weight. We find the motivation for the combination is based on the undisputed fact that Lee and Cooley both use behavioral analysis to solve the same problem. This overlap between the problem and its solution is “a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Both Lee and Cooley use behavioral analysis to address that problem and are interrelated. Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. (internal citation omitted). Based on our findings concerning the interrelated teachings of Lee and Cooley, we determine that one of ordinary skill in the art would have had reason to combine Lee and Cooley or to substitute one technique for the technique used in the other.” slip op. at 28
Patent outcomesUS 8,776,218 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,776,218 - Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentablePTAB · Jun 30, 2016 · IPR2015-00375 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 3–8, 11, 13–18, 21, 22, 24–29, 32, 34–39, and 42 are unpatentable: anticipated by Khazan or obvious over Khazan with Arnold, with Agrawal added for claims 3, 13, 24, and 34.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownTerm construed petitioner constructionDecided for petitioner
“claims). Pet. 8. In our Decision to Institute, we determined the broadest reasonable construction of anomalous is: “deviation/deviating from a model of typical computer system usage.” Dec. 6. We specifically recognized that the Specification contemplates that “attack data” may be used to build the model used as a baseline for comparison to identify anomalous behavior. Id. Neither party has indicated that our determination in regard to that claim construction was improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determination. Patent Owner also suggests the construction “deviation/deviating from a model of typical computer system usage” requires “identifying statistical deviations from normal.” PO Resp. 23. The claim language does not require a statistical analysis, and Patent Owner does not present sufficient evidence of any language in the Specification that suggests that such a limitation was intended to be imported into the claims. Thus, we do not adopt this limit on our construction.” slip op. at 6
- Skill levelSkill level board ownDecided for patent owner
“We have considered Patent Owner’s argument that the Petition fails to propose properly a level of ordinary skill in the Petition itself and that the level of skill suggested by Petitioner’s Declarant is higher than the level used in the related district court case. PO Resp. 4–6. Nevertheless, Patent Owner does not argue that the combinations of the teachings of the references are beyond the level of skill of a person of ordinary skill in the relevant art. “The level of skill in the art might be gleaned from the prior art itself.” See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985) (“A specific finding on the level of skill in the art is not . . . required where the prior art itself reflects an appropriate level and a need for testimony is not shown.”). Here, we find that the prior art adequately reflects an appropriate level of skill and that Patent Owner does not demonstrate a need for testimony or other evidence to establish the level of skill of a person of ordinary skill in the relevant art. Also, we find that, even though Dr. Goodrich suggests a level of skill higher than the level used in the related district court case, Patent Owner does not show sufficiently that any such difference in level of skill is material to the obviousness analysis in this case.” slip op. at 23
- Expert testimonyPetitioner expert discountedDecided for patent owner
“40. Dr. Goodrich testified “Agrawal discloses using a Markov process to randomly select a model. (Agrawal, 2:63–3:3, Ex. 1008; Ex. 1009 at p.3) (A ‘Markov process’ is ‘a stochastic process which assures that in a series of random events the probability of an occurrence of each event depends only on the immediately preceding outcome.’).” Ex. 1003 ¶ 96. Dr. Goodrich does not explain how use of the Markov process results in a random selection beyond the fact that “random events” are a focus of the process. 32 Petitioner also asserts through its Declarant that “one of ordinary skill in the art would recognize that random selection of models is one of a finite number of identified, predictable selection techniques and it would be obvious to try random selection among models because it has a reasonable expectation of success.” Pet. 42 (citing Ex. 1003 ¶ 96). Petitioner does not explain how random selection is one of a finite number of predictable selection techniques, for example, Petitioner does not show how many other techniques could be considered. See Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (“KSR posits a situation with a finite, and in the context of the art, small or easily traversed, number of options that would convince an ordinarily skilled artisan of obviousness . . . . [T]his clearly is not the easily traversed, small and finite number of alternatives that KSR suggested might support an inference of obviousness.”). Dr. Goodrich has not identified sufficient support for the predictability of the art. For example, Dr. Goodrich has not explained sufficiently why, or identified evidence that shows the invention described in the ’115 Patent falls into a very predictable field, one of ordinary skill in the art would have possessed the requisite skills to make the proposed combinations, or one of ordinary skill in the art reasonably would have anticipated the combination to function in an ordinary and expected way. See Rothman v. Target Corp., 556, F.3d 1310, 1319–20 (Fed. Cir. 2009).” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“application executes additional monitoring code which indicates which of the programs functions are being called. Pet. 20–21; Ex. 1010, ¶¶ 5, 44, 73, 75, 78. Khazan states that “[w]hen the application is executed, dynamic analysis is used to intercept calls to targets and verify them against the model.” Ex. 1010, Abstract. Further, Petitioner emphasizes that Khazan explains that dynamic analysis is performed “during execution of the application.” Pet. 21; Ex. 1010 ¶ 62. We are persuaded by Petitioner’s showing, which we adopt as our own, that Khazan discloses modifying a program to include indicators of program-level function calls being made during execution of the program. Claims 22, 32, and 42 further recite comparing at least one of the indicators of program-level function calls being made in an emulator to a model of function calls for at least a part of the program. For this limitation, Petitioner contends that Khazan discloses monitoring of program level function calls made by an application in an emulator. Pet. 22; Ex. 1010 ¶¶ 66, 111. Petitioner asserts that Khazan discloses “[w]hen the application is executed, dynamic analysis is used to intercept calls to targets and verify them against the model” and “[t]he verifications may involve comparing the invocation and target location, as well as other call-related information . . . to the corresponding information identified by static analysis.” Pet. 22; Ex. 1010, Abstract. Further, Petitioner states that Khazan explains that dynamic analysis is performed “during execution of the application.” Pet. 21; Ex. 1010 ¶ 62. We are persuaded by Petitioner’s showing, which we adopt as our own, that Khazan discloses comparing at least one of the indicators of 14 program-level function calls being made in an emulator to a model of function calls for at least a part of the program. Claims 22, 32, and 42 further recite identifying a function call corresponding to the at least one of the indicators as anomalous based on the comparison. For these limitations, Petitioner contends that Khazan discloses the verification described above involves comparing run time behavior with the application model. Pet. 23; Ex. 1010, Abstract. Petitioner contends that the run time behavior in Khazan is monitored using monitoring code added to the application using the instrumentation technique (i.e., indicators). Pet. 23; Ex. 1010 ¶¶ 64, 75. Khazan further discloses “[i]f the run time behavior deviates from the application model, it is determined that the application executable has executed MC [malicious code, i.e., anomalous function call].” Pet. 23 Ex. 1010 ¶ 65. We are persuaded by Petitioner’s showing, which we adopt as our own, that Khazan discloses identifying a function call corresponding to the at least one of the indicators as anomalous based on the comparison.” slip op. at 14
Patent outcomesUS 8,074,115 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Markman · KSRPatents in suitUS 8,074,115 - Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentablePTAB · May 31, 2016 · IPR2015-00378 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 14 and 16–24 are unpatentable as obvious over Bace and Russinovich; claims 25 and 26 were not shown unpatentable because the evidence did not establish the claimed feature-likelihood limitations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“contends that this construction is necessary to clarify that the challenged claims require monitoring registry accesses because Petitioner’s declarant, Dr. Michael T. Goodrich, testified during his deposition that the records “may be records that don’t have direct impact on the registry.” Id. at 7–8. Even if Patent Owner’s characterization of Dr. Goodrich’s deposition testimony is accurate, Petitioner does not argue in the Petition or the Reply that the challenged claims do not require monitoring registry accesses. See Pet. 13–15, 21–32; Pet. Reply 1, 3–8. As such, there does not appear to be a dispute that requires claim construction. 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.”). Nonetheless, in order to avoid any ambiguity, we provide an express construction of the phrase “records regarding processes that access the operating system registry.” We determine that the evidence supports Patent Owner’s proposed construction. The written description of the ’084 patent consistently indicates that records of processes are obtained by monitoring accesses to the operating system registry. Ex. 1001, col. 5, ll. 6–18, col. 8, ll. 9–10, col. 8, ll. 22–24, col. 13, ll. 28–31, col. 13, ll. 46–52. In addition, Petitioner acknowledges that the challenged claims require monitoring accesses to the operating system registry. Tr. 12:15–13:3. Patent Owner’s proposed construction, however, omits the claim terms “processes” and “operating system,” which are part of the phrase being construed. Ex. 1001, col. 23, ll. 32–34. Therefore, we modify Patent Owner’s proposed construction to include those terms. Specifically, we construe the phrase “records regarding processes that access the operating system registry” to mean “records regarding processes obtained by monitoring accesses to the operating system registry.”1” slip op. at 6
- Skill levelOther
“of ordinary skill in the art at the time of the ’084 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 28. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 9–10. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex 1029 ¶¶ 7–8; Ex. 2018, 78:2-23. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case. Patent Owner argues that, even if Petitioner correctly defines the level” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“90–93, 128, 139 (pp. 68–69); Ex. 1029 ¶¶ 9–10. Therefore, the teachings of Bace, together with the background knowledge and perspective of a person of ordinary skill in the art, would have made it obvious to use records obtained by monitoring registry accesses as an information source for an anomaly detection system. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362– 63 (Fed. Cir. 2013); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Thus, Petitioner identifies evidence indicating that Bace teaches determining the likelihood of observing an event, but does not identify evidence indicating that Bace teaches determining the likelihood of observing a feature, as recited in claim 25. Pet. 41–42; Pet. Reply 23–24; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 41–42; Pet. Reply 23–24; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’084 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”). Therefore, we determine that Petitioner has not shown by a preponderance of the evidence that claim 25 would have been obvious over Bace and Russinovich.” slip op. at 28
Patent outcomesUS 7,448,084 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,448,084 - Apple Inc. v. Far Stone Tech., Inc.All claims unpatentablePTAB · May 25, 2016 · IPR2015-00599 · APJ Howard B Blankenship · IPR · Final written decision
Claims 1–7 and 9–13 are unpatentable as obvious over Gold.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededDecided for patent owner
“For purposes of Institution, we adopted the District Court’s construction of “selecting means” as referring to an operation that does not require description of corresponding structure (such as an algorithm) in the Specification beyond a general purpose computer. Dec. on Inst. 7. Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“2. “Status” Consistent with the position taken by Patent Owner in the related District Court lawsuit, we interpret the term “status” as referring to a “state or condition.” See Ex. 2001, 17 (“Furthermore, the Court does not object to Farstone’s use of ‘state or condition’ as a substitute for ‘status’ in its proposed constructions.”). Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12
Patent outcomesUS 7,120,835 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,120,835 - Cisco Systems, Inc. v. Aip Acquisition LLCAll claims unpatentablePTAB · May 18, 2016 · IPR2015-00307 · APJ Justin Busch · IPR · Final written decision
Claims 1–29, except claims 10 and 25, are unpatentable under § 103 over Weinstein and RFC1190, with Gurrie or ISI added for the dependent claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“recited term, Petitioner is correct that disclaimer requires a clear disavowal of that allegedly ceded scope. Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (“a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution”); cf. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (“Prosecution disclaimer does not apply to an ambiguous disavowal.”). At oral argument, Patent Owner acknowledged that “if you just had the deletion of the article ‘an,’ it may – may or may not leave some confusion,” but asserted the arguments submitted with the amendments “made clear . . . that either the lower case I, lower case P or the upper case I, lower case p internet protocol/Internet protocol” refer to the “Internet Protocol,” which is a part of “TCP/IP.” Tr. 32:1–18. Patent Owner further conceded that the patent applicant did not explicitly articulate that the claim terms “internet protocol” and “Internet protocol” referred to the specific protocol that was the industry standard “Internet Protocol.” Id. at 35:14–17. In response to questions about patent applicant’s statements accompanying the subject amendments that the claims comprise or include TCP/IP, which indicate a broader scope not limited to only TCP/IP, Patent Owner argues that an ordinarily skilled artisan would have looked at the specification and seen that the only protocol the specification mentions is TCP/IP. Id. at 32:22–33:6. Based on the facts and argument presented, there is not sufficient evidence to find a clear and unmistakable disavowal of claim scope. The only amendment to the claims pointed to by Patent Owner is the removal of the article “an,” which originally preceded each of the disputed phrases. Notably, the patent applicant did not elect to amend the claims to recite “the Internet Protocol.” With respect to the patent applicant’s argument in its responses to office actions, we agree with Petitioner that the phrasing appears to merely restate the language recited in the claims. We find nothing presented by Patent Owner clearly indicates the patent applicant intended to disavow any scope covered by the plain and ordinary meaning of the recited terms. Patent Owner has not pointed to any discussion by the patent applicant that “internet protocol” or “Internet protocol” was intended to be limited to one particular protocol (specifically the “Internet Protocol” that is part of TCP/IP). Accordingly, we find Patent Owner failed to demonstrate that the patent applicant disavowed any scope within the” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The extrinsic evidence of record indicates that the Internet is one example of internetworking and Internet Protocol is one specific “internet protocol.” Ex. 2009, 10; Ex. 1001, 7:34–39. Accordingly, we construe internet protocol to be “a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices on different networks.” Neither side has pointed to persuasive evidence that the patent applicant’s use of different capitalization in different claims was merely oversight or error. Therefore, because there is a meaningful and logical way to distinguish the constructions of “internet protocol” and “Internet protocol” based on the selected capitalization of each phrase, we construe “internet protocol” and “Internet protocol” differently from each other. We have already discussed our construction of “internet protocol.” Accordingly, we construe “Internet protocol” to be “a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices over the Internet.” Our constructions of both “Internet protocol” and “internet protocol” include the Internet Protocol that is part of TCP/IP and, thus, are consistent with the specification of the ’247 patent. Moreover, those constructions are the ordinary and customary meaning that a person having ordinary skill in the art would have attributed to the disputed claim terms, in part because that person would have understood that “internet protocol,” “Internet protocol,” and “the Internet Protocol” are distinct phrases of increasingly narrow scope.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“preliminary construction provided in the Decision to Institute. Tr. 36:13–17. Our construction now is the same as our preliminary construction. Accordingly, after reviewing Petitioner’s arguments and in consideration of Patent Owner’s acknowledgment that ST-II is an internet protocol, as we have construed it, we find ST-II meets both the recited “internet protocol” and “Internet protocol.” We further find that “internet protocol” and “Internet protocol,” as we have construed them, also read on Weinstein’s ST protocol. Moreover, even under Patent Owner’s proposed construction, we find Petitioner has demonstrated that the combination of Weinstein and RFC1190 teaches using the Internet Protocol of TCP/IP at least because discloses encapsulating ST-II in IP packets. Petitioner argues Weinstein discloses converting a signal from any one of a digital telephone network, an analog telephone network, and a cellular network to ST format, which is then transmitted over ARPANET and a wide-band satellite network. Id. at 22–29. Petitioner asserts that a person of ordinary skill in the art would have understood ARPANET and the wide-band satellite network to constitute a portion of the Internet. Id. at 16, 17 (citing Ex. 1008, 14–16; Ex. 1019, 57). Thus, Petitioner asserts Weinstein teaches “sending the converted transmission through . . . the Internet,” as recited in claim 1 and “a telecommunication node configured for . . . transmitting the converted transmission through the Internet,” as recited in claim 16. Id. at 16, 17, 42. Patent Owner asserts RFC1190’s disclosure of encapsulating ST-II in IP packets does not meet the recited conversion of voice packets into internet protocol or Internet protocol. PO Resp. 30–31. Notably, however, Petitioner does not argue the encapsulation alone meets the recited conversion. Rather, Petitioner argues conversion from various telecommunications transmissions into a packetized format and optional encapsulation in IP packets meets the recited conversion. Pet. 26–29; Pet. Reply 9–11. We agree with Petitioner that, under our construction of “internet protocol” and “Internet protocol,” the conversion from the various voice protocols to ST meets the recited conversion. Moreover, even under Patent Owner’s proposed constructions of “internet protocol” and “Internet protocol,” the steps in Petitioner’s proposed Weinstein-RFC1190 combination of converting the voice protocols to ST-II and encapsulating those packets into IP packets meets the recited conversion because the proposed combination converts voice transmissions from various telecommunication protocols to Internet Protocol (of TCP/IP) packets, using the two-step process of generating ST packets and encapsulating those packets in IP packets. Ex. 1010, 4; Ex. 1011, 7, 64.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have lacked motivation to combine ST-II with the Internet Protocol, that argument fails at least because the use of ST-II over IP is described within a single reference, RFC1190. Thus, no combination of references is required to provide the teaching of using ST-II over IP, and, accordingly, any argument against combining ST-II with the Internet Protocol is unfounded. Moreover, Petitioner’s various references describing implementations of using ST-II over the Internet to transmit voice provide evidence in favor of a finding that it would have been obvious to transmit voice over the Internet using ST protocol. That leaves, at most, an argument by Patent Owner that an ordinarily skilled artisan would not have combined Weinstein’s asserted teachings (i.e., converting a voice transmission from a telecommunication protocol to ST, transmitting the ST packets over a data network, and converting the voice transmission back to a telecommunication protocol) with RFC1190’s asserted teaching (using the ST-II protocol, either alone or encapsulated in IP packets, to transmit packets across a data network). As discussed above, Petitioner has submitted evidence that internet engineers near the time of invention of the ’247 patent were implementing and considering implementing ST-II in various systems for voice communication across the Internet. Ex. 1023, 1–4; Ex. 1031, 20–21; Ex. 1032, 20–21. Moreover, RFC1190 clearly indicates that ST-II is a revised version of ST, notwithstanding ST-II’s lack of backward compatibility with the original ST protocol. Ex. 1011, 1; see Pet. 17. Petitioner also argues an ordinarily skilled artisan would have been motivated to upgrade Weinstein’s ST with RFC1190’s ST-II because RFC1190 identifies various improvements and benefits of ST-II over ST. Pet. 18–19 (citing Ex. 1011, 1, 8). Petitioner asserts combining RFC1190 with Weinstein is merely the application of a known technique to a known system yielding predictable results. Id. at 19. We are persuaded by Petitioner’s arguments that an ordinarily skilled artisan would have considered upgrading ST to ST-II, the version available at the time of invention of the ’247 patent. The fact that ARPANET no longer existed at the time of invention of the ’247 patent does not render all of Weinstein’s teachings unavailable to the hypothetical person of ordinary skill in the art. One would not have needed to “resurrect” the defunct ARPANET to take advantage of Weinstein’s teachings regarding combining voice networks with data networks. Rather, one would have gleaned the knowledge necessary to create a system using a data network to transport voice communication as a bridge between conventional telephony networks. We also agree with Petitioner that the submitted evidence regarding other systems adopting ST-II supports a conclusion that a person having ordinary skill would have been capable of making any hardware changes required to implement ST-II.” slip op. at 28
Patent outcomesUS 7,269,247 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,269,247 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 26, 2016 · IPR2015-00034 · APJ Minn Chung · IPR · Final written decision
Claims 1, 7–14, 17–19, 22, 23, 28, 40, 41, and 47–49 are unpatentable as obvious over Edwards, Patterson, and SnapManager Guide.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“6. Conclusion In summary, we find nothing in the intrinsic record, including the written description and the language of the claims, that justifies limiting the term “database block” by reading in the “metadata” or “specific number of bytes” limitations not found in the claims. Furthermore, no extrinsic evidence, including the testimony of experts, presented in this case is sufficient to overcome the plain claim language of the term “database block.” Therefore, on this record, consistent with the term as defined in the Specification, we construe “database block” to mean “a unit of data used by a database.” See Phillips, 415 F.3d at 1316 (“The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”) (citation omitted). B. Virtual Database In the Institution Decision, we preliminarily construed the term” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“IV. PRINTED PUBLICATION Petitioner asserts that SnapManager Guide is prior art “at least” under 35 U.S.C. § 102(a). Pet. 23. Patent Owner contests that SnapManager Guide is a prior art “printed publication” under § 102. PO Resp. 1‒4. We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). Initially, we note our disagreement with Patent Owner’s contention that Petitioner cannot rely upon evidence not submitted with the Petition to show that SnapManager Guide is prior art. PO Resp. 2‒4. In Patent Owner’s view, Petitioner must make out a prima facie case of unpatentability in its Petition, which includes the substantive element of SnapManager Guide being publicly accessible and prior art. Id. at 3–4. That position, however, does not account for the difference between the threshold for instituting a trial (35 U.S.C. § 314(a)) and proving unpatentability of a claim in trial (35 U.S.C. § 316(e)). As noted by our reviewing court, “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success. Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Although “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)), “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Rather, courts must take an “expansive and flexible approach” to the question of obviousness. Dome Patent L.P., 799 F.3d at 1380 (quoting KSR, 550 U.S. at 415). We find that the Petition provides ample reasons why one of ordinary skill in the art would have combined the teachings of Edwards, Patterson, and SnapManager Guide. Pet. 25–30, 35, 40–41. For example, all of the references address the same problem addressed by the ’808 patent.” slip op. at 79
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success. Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Although “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)), “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Rather, courts must take an “expansive and flexible approach” to the question of obviousness. Dome Patent L.P., 799 F.3d at 1380 (quoting KSR, 550 U.S. at 415). We find that the Petition provides ample reasons why one of ordinary skill in the art would have combined the teachings of Edwards, Patterson, and SnapManager Guide. Pet. 25–30, 35, 40–41. For example, all of the references address the same problem addressed by the ’808 patent.” slip op. at 79
Patent outcomesUS 8,150,808 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,150,808 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 13, 2016 · IPR2015-00014 · APJ Minn Chung · IPR · Final written decision
Claims 1, 4–9, 35, 46, 50, and 57 are unpatentable as obvious over Edwards, Patterson, and Sanders; claim 15 is unpatentable as obvious over those references and CaraDonna.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“IV. PRINTED PUBLICATION Patent Owner in its Response contests that Sanders is a prior art” slip op. at 46
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success. Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Although “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)), “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Rather, courts must take an “expansive and flexible approach” to the question of obviousness. Dome Patent L.P., 799 F.3d at 1380 (quoting KSR, 550 U.S. at 415).” slip op. at 78
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“we do not, and need not, consider such evidence. We have determined, as discussed above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to those additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1038, 1039, 1044–1046, 1048, 1053, 1056, 1058–1061, and 1064 is dismissed as moot. We consider Patent Owner’s motion to exclude with respect to each of the remaining exhibits below.” slip op. at 88
Patent outcomesUS 8,150,808 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,150,808
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.