• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · Jun 30, 2016 · IPR2015-00377 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 3–7, 9, 10, 12–16, 18–24, and 26 are unpatentable as obvious; the challenges to claims 2, 8, 11, 17, 25, and 27 were not proven.

  RulingsFinal written decision

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

    “claims). Pet. 7. 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.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “one of these distinct models, the ‘Oracle model,’ is combined with other models.” Pet. Reply 6 (citing Ex. 1008, 11:53–64 (showing that a selected ‘Oracle model’ is used in combination with a k-means algorithm and a Markov transition model); Ex. 1015 (Goodrich Suppl. Decl.) ¶ 19). Petitioner has not explained, however, why models created on different computers would be relevant to Khazan’s static model where the specific execution of two different computers would not affect the model.2 See In re Omeprazole Patent Litig., 536 F.3d 1361, 1380 (Fed. Cir. 2008) (reasoning that even though a certain modification could have been possible, it would not have been obvious because a person of ordinary skill in the art “would not have seen any need” to make the modification). Although we acknowledge Petitioner’s argument that Agrawal teaches using a combined model from different processors and the testimony of Petitioner’s Declarant, Dr. Goodrich to that effect (Pet. 23 (citing Ex. 1003 ¶ 84)), we are not persuaded that this would be sufficient to motivate the 2 Petitioner’s Declarant, in his supplemental declaration, states “[u]sing multiple computers spreads the computational overhead involved in creating the models across the computers, and allows for more models to be created in a shorter amount of time.” Ex. 1015 ¶ 20. We do not rely on this statement because this theory was not presented in the Petition and although the paragraph containing this language is cited to in Petitioner’s Reply at page 6, it is not explained or specifically relied upon. 24 combination given the differences discussed above. In other words, we agree with Patent Owner that Petitioner has not shown sufficiently that there was a motivation to apply the models produced on different computers as taught by Agrawal to the system of Khazan. Therefore, Petitioner, has not shown by a preponderance of the evidence that claims 2, 11, and 27 were obvious over the combination of Khazan and Agrawal.” slip op. at 24

  • Obviousness (§103) › KSR rationalesNot shown unpatentableUnpatentableMixed

    “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. 29–30 (citing Ex. 1003 ¶ 86). 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 ’322 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). 21 Finally, Petitioner cites Sobel (Ex. 1011)1 as support for it being “obvious to randomly select a subset of a group of computing choices.” Pet. 30. Petitioner characterizes Sobel’s teachings too broadly. Ex. 2030 ¶ 117. Sobel is directed to “providing software updates to a random sample of computers,” not to randomly selecting models. Pet. 30. Thus, we are not persuaded that Sobel is relevant to the inquiry here. For the reasons stated above, Petitioner has not shown by a preponderance of the evidence that claims 8, 17, and 25 were obvious over the combination of Khazan and Agrawal.” slip op. at 21

  • Skill levelSkill level board ownDecided for petitioner

    “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. 6–8. 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 28

  Patent outcomesUS 8,601,322 mixed
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,601,322
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00372 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1 and 3–8 are unpatentable as obvious over Bace and Russinovich; claims 9 and 10 were not shown unpatentable because the evidence did not establish the claimed likelihood of observing a feature.

  RulingsFinal written decision

  • BurdenMixed

    “We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 3–8 would have been obvious over Bace and Russinovich. We determine that Petitioner has not shown by a preponderance of the evidence that claims 9 and 10 would have been obvious over Bace and Russinovich.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “2. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Michael T. Goodrich, testifies that a person 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. 18–19. 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 ¶¶ 13–14; 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.” slip op. at 9

  • Expert testimonyOther

    “Patent Owner’s Motion for Observations E. Patent Owner filed a Motion for Observations on the cross examination of Dr. Michael T. Goodrich (Paper 47), to which Petitioner filed a Response (Paper 50). We have considered Patent Owner’s observations and Petitioner’s responses, and we have given Dr. Goodrich’s testimony the appropriate weight in making our determination in this case.” slip op. at 30

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

    “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 9. Pet. 39–41; 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. 39–41; 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 9 would have been obvious over Bace and Russinovich. Claim 10 6. Claim 10 depends from claim 9, and recites “wherein determining a likelihood of observing a feature comprises determining a conditional probability of observing a first feature in the records of processes that access the operating system registry given an occurrence of a second feature in the records.” Ex. 1001, col. 23, ll. 8–12. Because claim 10 depends from claim 9, and Petitioner has not shown that claim 9 would have been obvious over Bace and Russinovich, we determine that Petitioner also has not shown by a preponderance of the evidence that claim 10 would have been obvious over Bace and Russinovich. See supra Section II.B.5.” slip op. at 25

  Patent outcomesUS 7,448,084 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,448,084
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,448,084
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00374 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–4 are unpatentable as anticipated by Bace and Denning; claims 7 and 8 were not shown unpatentable because neither reference disclosed determining the likelihood of observing a feature.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “of ordinary skill in the art at the time of the ’306 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 ’306 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 ¶ 24. 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. 8. 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. 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.” slip op. at 5

  • BurdenMixed

    “determining the likelihood of observing an event, but does not identify evidence indicating that Bace discloses determining the likelihood of observing a feature, as recited in claim 7. Pet. 30–32; Pet. Reply 14–15; 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. 30–32; Pet. Reply 14–15; 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 ’306 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.”).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Bace specifies that certain information sources are used for a computer system with a Windows operating system. Namely, Bace discloses that, for a Windows computer system, “security log events are the primary focus of intrusion detection systems,” and “especially those having to do with the creation, deletion, and alteration of system files and other 3 Patent Owner suggests that this portion of Bace only relates to the system call records gathered by UNIX system audit trails. Paper 48 ¶¶ 3–5. Section 3.2.4 of Bace, however, describes the advantages of operating system audit trails generally, not just UNIX system audit trails. Ex. 1007, 70. objects.” Id. at 74–75 (emphases added). Bace then explains that the reference data obtained from the Windows computer system is used to generate the anomaly detection models discussed later in Bace. Ex. 1007, 109 (“Anomaly detectors are populated by running them against the collected reference event data.”); id. at 74–75, 121–122; Ex. 1003 ¶ 112. Thus, for a Windows computer system, Bace expressly links the reference data obtained by monitoring the creation, deletion, and alteration of system files with the disclosed anomaly detection models. Ex. 1029 ¶¶ 15–19; cf. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370–71 (Fed. Cir. 2008) (explaining that the prior art did not link two distinct teachings). Bace further discloses that Denning’s anomaly detection model, which includes the mean and standard deviation model, is the “seminal” anomaly detection model. Ex. 1007, 108, 121–122. As a result, Bace provides a specific reason for selecting Denning’s anomaly detection model from among the other models disclosed in Bace. Ex. 1003 ¶ 111; Ex. 1029 ¶ 19. c. Summary For the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 is anticipated by Bace.” slip op. at 11

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Here, Patent Owner argues that Petitioner’s Reply exceeds the scope of a proper reply because it presents a new theory of unpatentability for claim 7 based on the TIM system in Bace that is not included in the Petition. PO Mot. Str. 2–3. Petitioner, on the other hand, argues that its Reply is proper because the Petition relies on the TIM system in Bace with respect to claim 8, and, thus slip op. at 27

  Patent outcomesUS 7,913,306 mixed
  § 102 anticipation
  Patents in suitUS 7,913,306
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 12, 2016 · IPR2015-00026 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–13, 17–29, and 33 are unpatentable as obvious over the four combinations of references identified in the decision.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “1030, 1032, 1033, 1035–1137, 1040, 1041, and 1045. Id. at 1 n.1. Of the other objected-to Exhibits, except for Exhibits 1048 and 1049, we do not, and need not, consider such evidence. We determine, for reasons set forth below, 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 that rely on those additional Exhibits. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1029, 1030, 1032, 1033, 1035–1146, 1054, and 1062 is dismissed as moot.” slip op. at 9

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

    “Petitioner relies on Sarma for its data compression and other techniques, not for its teachings about virtualization and databases. Pet. 58 (citing Ex. 1018, 2:27–11). Petitioner points out that Sarma discloses the NetApp SnapMirror and ONTAP technology. Id. (citing Ex. ’026 Ex. 1018, 7:11–14; 14:16–23). Petitioner persuasively shows that Sarma’s standard compression or encryption techniques would have benefited the NetApp system described in the base references, for example, “because compression was a well-known method of increasing transmission and storage efficiency.” Id. (citing ’026 Ex. 1108 ¶¶ 183–84); see also id. at ’026 Pet. 31–33 (discussing further motivation to combine). We adopt Petitioner’s showing and determine that Petitioner has established by a preponderance of the evidence that the subject matter of claims 17 and 33 would have been obvious over Sanders, Edwards, Data ONTAP Guide, and Sarma.” slip op. at 92

  Patent outcomesUS 8,161,077 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,161,077
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 12, 2016 · IPR2015-00025 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–13, 17–29, and 33 are unpatentable as obvious under § 103(a) over four combinations of Sanders, Edwards, and additional references.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “1030, 1032, 1033, 1035–1137, 1040, 1041, and 1045. Id. at 1 n.1. Of the other objected-to Exhibits, except for Exhibits 1048 and 1049, we do not, and need not, consider such evidence. We determine, for reasons set forth below, 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 that rely on those additional Exhibits. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1029, 1030, 1032, 1033, 1035–1146, 1054, and 1062 is dismissed as moot.” slip op. at 9

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

    “techniques, not for its teachings about virtualization and databases. Pet. 58 (citing Ex. 1018, 2:27–11). Petitioner points out that Sarma discloses the NetApp SnapMirror and ONTAP technology. Id. (citing Ex. ’026 Ex. 1018, 7:11–14; 14:16–23). Petitioner persuasively shows that Sarma’s standard compression or encryption techniques would have benefited the NetApp system described in the base references, for example, “because compression was a well-known method of increasing transmission and storage efficiency.” Id. (citing ’026 Ex. 1108 ¶¶ 183–84); see also id. at ’026 Pet. 31–33 (discussing further motivation to combine). We adopt Petitioner’s showing and determine that Petitioner has established by a preponderance of the evidence that the subject matter of claims 17 and 33 would have been obvious over Sanders, Edwards, Data ONTAP Guide, and Sarma.” slip op. at 92

  • BurdenFwd all claims unpatentableUnpatentable

    “the evidence that claims 1–13, 17–29, and 33 of the ʼ077 patent are unpatentable based on the following grounds under 35 U.S.C. § 103(a) for obviousness: A. Claims 1, 3, 5–7, 9, 10, 18, 20–23, 25, and 26 over the combination of Edwards and Sanders; B. Claims 2, 4, and 19 over the combination of Sanders, Edwards, and Patel; C. Claims 8, 11–13, 24, and 27–29 over the combination of Sanders, Edwards, and Data ONTAP Guide; and D. Claims 17 and 33 over the combination of Sanders, Edwards, Data” slip op. at 92

  Patent outcomesUS 8,161,077 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,161,077
• NEC Display Solutions Of America / NEC Display Solutions, Ltd. v. Cascades Projection LLCAdverse judgment
  PTAB · Jan 28, 2016 · IPR2015-01841 · APJ Howard B Blankenship · IPR · Adverse judgment

  The Board entered adverse judgment against Patent Owner on claims 1, 17, and 61 after their statutory disclaimer, and terminated the proceeding.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (37 C.F.R § 42.73(b)(2)). No claim remains to be adjudicated in this proceeding. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1, 17, and 61 of the ’347 patent; and FURTHER ORDERED that this proceeding is terminated.” slip op. at 2

  None
  Patents in suitUS 7,688,347
• Christie Digital Systems USA, Inc. v. Cascades Projection LLCAdverse judgment
  PTAB · Dec 16, 2015 · IPR2015-01342 · APJ Howard B Blankenship · IPR · Adverse judgment

  The Board entered adverse judgment against Patent Owner on claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 and terminated the proceeding.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (37 C.F.R § 42.73(b)(2)). No claim remains to be adjudicated in this proceeding. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 of the ’347 patent; and” slip op. at 2

  None
  Patents in suitUS 7,688,347
• Universal Remote Control, Inc. v. Universal Electronics Inc.Some claims unpatentable
  PTAB · Dec 15, 2015 · IPR2014-01104 · APJ Sally C Medley · IPR · Final written decision

  Claims 1, 9, 10, 14, and 15 are unpatentable as obvious over Ciarcia and Hastreiter; unpatentability of claims 16 and 17 was not shown.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “In any event, and even assuming that URC and Ohsung share an employee, we do not agree with Patent Owner that such a sharing of one employee (Mr. You) suggests that Ohsung exercised or could have exercised control over Petitioner’s participation in the proceeding. For instance, Mr. You is said to have been a director of engineering for Petitioner. Id. at 36– 37. Patent Owner has not shown that Mr. You was in a position within Ohsung to persuade Ohsung and/or Petitioner to make a litigation decision to pursue an inter partes proceeding. Moreover, we are not persuaded by Patent Owner’s argument that because URC previously paid for office space which an Ohsung employee (Mr. You) used, this suggests that Ohsung has reciprocated by paying for anything associated with the proceedings or controlled the proceeding in any other way. Id. If anything, the evidence tends to show that URC pays for expenses, such as the costs associated with these proceedings, not Ohsung. We also have considered Patent Owner’s argument that Ohsung’s and URC’s close relationship is exemplified by a settlement and license agreement (Ex. 2050, “agreement”) between Patent Owner and Petitioner, a provision of which obligates Ohsung to pay royalties to Patent Owner. PO Resp. 38. Patent Owner argues that the agreement strongly suggests that Ohsung may have had the opportunity to control, direct, and/or influence the present proceeding. Id. at 38–39. The agreement was executed in 2004. The royalties that Patent Owner mentions were paid out in 2005, 2006, and 2007. Patent Owner has not shown how the agreement exemplifies a close relationship in 2014 when the petition in this proceeding was filed. Moreover, the agreement and royalties are directed to a set of patents, none of which is the patent involved in this proceeding. Accordingly, we are not persuaded by this argument. Lastly, we are not persuaded by Patent Owner’s argument that because URC and Ohsung share litigation counsel in the related case, that that tends to show that Ohsung has controlled, or had the opportunity to control, this proceeding. In summary, and based on the totality of arguments and evidence presented, we are not persuaded that Ohsung is a real party-ininterest on behalf of Petitioner.” slip op. at 7

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

    “Petitioner proffers constructions for several means-plus-function terms (Pet. 14–20), and Patent Owner weighs in on those constructions (PO Resp. 5–22). For purposes of this Final Written Decision, we determine that those terms do not require express construction. Patent Owner also contends that Petitioner’s failure to propose a construction for “IR lamp driver means,” “receiving means,” “decoding means,” “first connector means,” and “interface connector means” in accordance with 35 U.S.C. § 112, sixth paragraph, is fatal to the Petition. PO Resp. 2–3. We agree with Petitioner, however, that these “means” are part of means-plus-function limitations which Petitioner did construe. PO Resp. 11. For this Final Written Decision, we determine that only the terms “code data” and “instruction codes” require express construction.” slip op. at 9

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

    “None of the challenged claims define or further explain what “code data” means. For example, there is nothing in claim 1 that would lead us to believe that data, albeit code data, should be construed to mean data plus programming or executable computer instructions. The phrase is “code data.” Moreover, the challenged claims distinguish between instruction codes and code data by claiming them both as separate elements. Based on the plain words of the challenged claims, code data and instruction codes are Petitioner’s arguments advanced during trial hearing that were not raised prior to the trial hearing. To do otherwise would be prejudicial to Patent Owner. 6 In its Reply brief, and during hearing, Petitioner argued that the claim 1 “instruction codes” are synonymous to the “instructions” that Patent Owner argues is part of “code data.” Pet. Reply 4, 7–8; Tr. 18. Patent Owner had ample opportunity to explain, during hearing, that “instruction codes” are different from “instructions” that it argues is part of “code data,” but did not do so. Tr. 38. not the same thing. Yet, Patent Owner’s claim construction would effectively rewrite the language to remove, for example with respect to claim 1, the “at least one of . . . or” language. For example, claim 1 covers choosing both instruction codes and code data, but under Patent Owner’s construction such scenario would make little sense because code data would also include instruction codes or instructions.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “From the above, Mr. Gafford acknowledges that Ciarcia’s menus do not necessarily include instructions, only that they can include instructions. Moreover, Mr. Gafford’s testimony that a well-known method of defining a menu was to write a program expressed in the form of instructions does not mean that the menus defined in the Ciarcia reference included such instructions. We give Mr. Gafford’s testimony little if any weight that defining menus to include instructions was a mere design choice and well known at the time of the invention, because the underlying evidence in support of that assertion has not been shown to be relevant at the time of the invention. In particular, the content of a current Wikipedia webpage to which we are directed has not been shown to be relevant to what a person of ordinary skill in the art would have known at the time of the invention, which was over twenty years ago.” slip op. at 22

  Patent outcomesUS 5,414,761 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,414,761
• Universal Remote Control, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01146 · APJ William A Capp · IPR · Final written decision

  Claims 13–15 were not shown unpatentable because Dubil does not disclose the claimed configuration stored in and accessed by the entertainment device.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “As between the foregoing two possibilities, we think the latter construction is the correct one. The claims indicate that a configuration of the entertainment device is a construct that can be “downloaded” from a computer. Id., claim 13. It is also a construct that can be “access[ed] and use[d]” in association with a controlling device activity key commend value. Id. These attributes are more consistent with a set of executable instructions and data that is stored in memory than a physical state or configuration of the entertainment device after it has been configured. Id. at 6:38 (“finalized and stored”); 6:41 (“stored and associated”). In view of the foregoing we construe configuration of the entertainment device in claims 13 and 14 as referring to information stored in memory in the entertainment device that can be accessed and used to configure the entertainment device.” slip op. at 16

  • ExcludeMotion to exclude, grantedGranted

    “The admissibility of evidence in an IPR proceeding generally is governed by the Federal Rules of Evidence. See 37 C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under Federal Rule of Evidence 611(c), leading questions should not be used on the direct examination of a witness except as may be necessary to develop the witness’ testimony. “A leading question is one that suggests to the witness the answer desired by the examiner.” McCormick, EVIDENCE § 6 (7th ed. 2013). Questions that begin, “Isn’t it true that” or “Don’t you agree that” typically suggest the answer and are leading. Other types of questions, such as questions that call merely for a yes or no answer or that ask the witness to choose between alternatives posed by the questioner, may or may not be leading, depending on the context in which the question is asked, the tone of voice employed, and the body language or conduct of counsel. See, e.g., United States v. Warf, 529 F.2d 1170, 1174 (5th Cir. 1976) (prosecutor improperly led witness to make identification by pointing at the accused).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “We are not persuaded by Petitioner’s argument or evidence. Petitioner’s conclusion does not follow logically and necessarily from Petitioner’s underlying premises. The system configuration described by Petitioner just as easily could be accomplished by sending on/off commands to the various input and output components so that the desired input device is powered on and the non-desired input device is powered off. The same can be said of the output devices. Thus, the entertainment system, as a whole, can be configured by sending power on/off commands to various devices and then passively routing the input and output signals through the VCR. Petitioner cites to no explicit disclosure in Dubil where the VCR actively switches between a plurality of inputs and a plurality outputs. We have reviewed Dubil and find no such explicit disclosure. Neither do we find that Dubil discloses active switching of the VCR inherently. While it may be possible that the VCR could switch between sources and destinations, we are not persuaded that such functionality is necessarily present in Dubil for it to operate. Inherency may not be established by probabilities or possibilities. See Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Furthermore, Dubil cannot associate a remote control activity key command value with a configuration of the entertainment device unless Dubil first possesses a configuration of the entertainment device within the meaning of claim 13. We are not persuaded that Dubil discloses a “configuration of the entertainment device” as we have construed the term. Petitioner’s evidence and argument focuses on Dubil’s entertainment system as a whole. However, “configuration of the entertainment device,” as it is used in claim 13, refers to a set of executable instructions and data stored in memory in the entertainment device that is first downloaded from a personal computer and is then accessed and used after the entertainment device receives a signal from the remote control that contains a command value that is associated with such configuration. Petitioner provides no persuasive evidence that Dubil’s VCR has memory that stores executable instructions and data in the form of a “configuration of the entertainment device” that is downloaded from a computer and is accessed and used as claimed.” slip op. at 22

  • BurdenNot shown unpatentable

    “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Dubil fails to disclose all elements of claim 13, we find that Petitioner has failed to establish, by a preponderance of the evidence, that Dubil anticipates claim 13. slip op. at 26

  Patent outcomesUS 8,243,207 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,243,207

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.