• Samsung Electronics America, Inc. / Asus Computer International, Inc. v. James B. GoodmanSome claims unpatentable
  PTAB · Oct 29, 2019 · IPR2017-02021 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1, 5, 10, and 16 are unpatentable over Ooishi and Palaniswami, with Abe added for claims 10 and 16; claims 2–4, 6–9, and 11–15, 17–20 were not shown unpatentable.

  RulingsFinal written decision

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

    “reasonable construction consistent with the Specification of a control device “for selectively electrically isolating said memory devices from respective address lines and respective control lines so that when said memory devices are electrically isolated, any signals received on said respective address lines and respective control lines do not reach said memory devices” as recited in independent claims 1 and 10 requires that the control device electrically isolate the memory devices from all address and control lines that communicate with the memory devices.10” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co, 383 U.S. 1, 17 (1966). Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’315 patent (a “POSITA”) would have had, inter alia, a bachelor’s degree in electrical, electronics, computer engineering; or the equivalent training, and would have had approximately 2 to 3 years of experience in computer systems, circuits, electronics, or a related discipline. Pet. 9; Ex. 1002 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of the level of ordinary skill. See PO Resp. 8. Based on our review of the ’315 patent, the cited prior art, and Dr. Wolfe’s testimony, we determine a specific finding regarding ordinary skill level is not required as the prior art reflects an appropriate level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). However, to the extent a specific finding regarding the level of skill is required, we find Petitioner’s articulation of a person of ordinary skill in the art is consistent with the teachings of the prior art and adopt Petitioner’s description of a POSITA as someone who “would have had a bachelor’s degree in electrical, electronics, or computer engineering; or the equivalent training, and would have had approximately two to three years of experience in computer systems, circuits, electronics, or a related discipline.” See Pet. 9.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). A reference is deemed publically accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Petitioner asserts JESD21-C was published January 1997 and is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 37–38. As support, Petitioner relies upon the Declaration of John J. Kelley (“the Kelley Declaration”), the current President of the Solid State Technology Association of the Joint Electron Device Engineering Council (“JEDEC”). See Ex. 1007 ¶ 2. Mr. Kelly states that JEDEC specification JESD21-C, Configurations for Solid State Memories, Release 7 (January 1997), a copy of which is attached to his declaration as Exhibit 17, “was made publicly available in January 1997.” Id. ¶¶ 4, 7. Mr. Kelley testifies that in January 1997 copies of the entire JESD21-C volume “would . . . have been available for purchase by anyone in the public” and that “pages comprising the specifically updated modules would have been sent to those who subscribed to the annual updating service for JESD21-C.” Id. ¶ 6. Patent Owner does not dispute that JESD21-C qualifies as prior art under 35 U.S.C. § 102(b). See PO Resp. 7. Based on the current record, we determine JESD21-C qualifies as a prior art printed publication under § 102(b).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not persuasively shown that Dell discloses a control device that electrically isolates the memory devices as required under the claim construction set forth above in devices even when the devices are in a low-power or self-refresh mode, Petitioner has not shown that Dell’s memory devices are electrically isolated from “respective control lines” such that “any signals received on said . . . respective control lines do not reach said memory devices” as required by claims 1 and 10. Accordingly, we determine Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’315 patent is unpatentable over Dell or that claim 10 is unpatentable over the combined teachings of Dell and Abe.” slip op. at 21

  Patent outcomesUS 6,243,315 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,243,315
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 4, 2019 · IPR2018-01457 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and left institution denied, finding no abuse of discretion under § 325(d) or § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “Petitioner appears to limit the inquiry to evaluation of the prior art by a particular examiner, namely the ’069 examiner. However, § 325(d) provides that “the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). Moreover, the Becton Dickinson factors are non-exclusive, and factor 4 considers, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton Dickinson at 17 (emphasis added). Neither Section 325(d) nor Becton Dickinson appears to limit the inquiry to a particular examiner as Petitioner argues. Consideration of the asserted prior art by the Office during previous examination of the patent at issue or closely related patents is, therefore, a relevant consideration under Section 325(d).” slip op. at 5

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. We further note that district court has completed claim construction. See Ex. 2038. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 16 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 8,976,069
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 2, 2019 · IPR2018-01455 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution under § 325(d) and § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “litigation is stayed. Opp. 1. Patent Owner advises, “on March 15, 2019, the court issued a claim construction order reaffirming the earlier construction of the terms relevant to the present proceeding. Id. (citing Ex. 2028, passim). Patent Owner argues, “the claim construction order evidences the new court’s clear intent to proceed with the case.” Id. Patent Owner also advises that “[o]n April 12, 2019, the parties submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date predating any conclusion to an instituted IPR, (2) confirming that fact discovery has completed, and (3) requesting a close to expert discovery on May 31, 2019.” Id. (citing Ex. 2029, 1–3). The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2029. We further note that district court has completed claim construction. See Ex. 2028. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”).” slip op. at 8

  Discretionary denial
  Patents in suitUS 7,394,432
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 1, 2019 · IPR2018-01451 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and maintained denial of institution under § 325(d) and § 314(a), finding no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8–9. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2030. We further note that district court has completed claim construction. See Ex. 2029. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 7,397,431
• Juniper Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing

  The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

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

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  • Other 314aInstitution denied discretionary otherInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  Claim constructionDiscretionary denial
  Patents in suitUS 7,647,633
• Infinera Corp. v. Core Optical Technologies, LLCRehearing denied
  PTAB · Jul 11, 2019 · IPR2018-01259 · APJ Ken B Barrett · IPR · Rehearing

  The Board denied Infinera’s rehearing request, leaving in place the denial of institution because the Petition inadequately addressed claim construction, prior-art combinations, and reasons to combine.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “This is not the first time that the ’211 patent has been before a tribunal. It cannot be said that Petitioner is unaware of the important claim construction matters that go to the heart of dispositive patentability issues. Petitioner, on the facts of this case,[] has failed to identify adequately its proposed construction applicable to its patentability challenges. Further, Petitioner cannot avoid its duty to comply with Rule 104(b)(3)[1] by merely inviting us to apply a means-plus-function interpretation rather than affirmatively advocating (in this forum) the application thereof. Petitioner has neither taken a definitive position nor provided complete briefing, and we decline to assume Petitioner’s task of fully analyzing the claim construction for XPIC. Petitioner’s failure in this regard is reason enough to deny the petition. Dec. 13–14 (footnote omitted). We further denied institution because Petitioner’s articulation of a single ground implicated the application of multiple potential constructions. See Dec. 16–17 (explaining—in the context of Petitioner’s challenge to claim 15 over Cusani 1992, Cusani 1997, and Kavehrad—“[t]he number of possible asserted combinations is further multiplied by the overlay of the multiple potential claim constructions discussed above.”).” slip op. at 3

  • BurdenDecided for patent owner

    “Petitioner’s analysis in many places is little more than an assertion that each particular element of a larger limitation was individually known in the prior art. Petitioner does not describe adequately a specific proposed combination of references. Because of this and in light of, at least, the massive number of possible proposed combinations, Petitioner has failed to identify adequately how each challenged claim is to be construed and how the construed claim is unpatentable. 37 C.F.R. § 42.104(b)(3), (4). Dec. 18. Petitioner does not identify any portion of the Petition where a specific proposed combination of references is adequately described. See Req. Reh’g 13. Rather, Petitioner impliedly argues that it need not do so. Id. (quoting, but not explaining the relevance to this case, a bodily-incorporation proposition from In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)). Petitioner makes the conclusory argument that “[i]n providing demonstrative illustrations of a combined system, coupled with a thorough analysis of the teachings of the prior art, Petitioner’s obviousness arguments directly addressed that question” of “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. (citing In re Mouttett, 686 F.3d at 1333). Petitioner’s argument is, in effect, merely an assertion of disagreement with our determination that the Petition was not persuasive. Petitioner has not identified anything we misunderstood or overlooked.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “combined the references’ teachings to arrive at the claimed subject matter” and that “Petitioner’s reasoning is an oversimplification and too conclusory to constitute the necessary articulated reasoning with rational underpinning.” Dec. 20, 21 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That oversimplification was a reference to Petitioner’s arguments pertaining to the alleged similarity of signal transmission systems, whereas “the key issues involve the specific techniques used to cancel specific types of interference of received signals in optical systems versus radio frequency systems.” Id. at 23. In this regard, we stated: “Demonstrating obviousness in this case requires more than a showing that optical and RF [radio frequency] systems both utilize general techniques related to orthogonally polarized signals and had known interference problems.” Id.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 6,782,211
• Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentable
  PTAB · May 14, 2019 · IPR2018-00132 · APJ Thu A Dang · IPR · Final written decision

  Claims 1, 3, 7, 12, 18, 22–27, 36, 41–46, 55, and 58–63 are unpatentable as obvious over the stated combinations of Aldred and RFC 1692 with Ulrich or Denzer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.13” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have to be an individual with “at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years of experience related to networked interactive applications,” or a person with “at least a bachelor’s degree in computer science, computer engineering, or physics” who has “approximately four years’ experience in network[ing] interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 24

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “7. Prior Art Printed Publication Status of RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) was available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 qualifies as prior art printed publications.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Nevertheless, as to Patent Owner’s contention that Petitioner has failed to consider “the effect of larger packets on the packet order of the CSP of Aldred if the TMux protocol is included” (PO Resp. 23), we are persuaded by Petitioner’s argument that “RFC 1692 discusses adding segments to a multiplexed message in the order they are received.” Pet. Reply 4 (citing 1010 ¶¶ 6–7). In particular, Petitioner argues that “RFC 1692 expressly discloses that large TCP segments can be added to the end of any pending multiplexed packet, such that all segments would be sent in the order received.” Pet. Reply 3. According to Petitioner, “RFC 1692 explains that when a segment that would not normally be multiplexed – such as a large segment – is received and a multiplexed message is under construction, ‘the extra segment can be added to the TMux message under construction, and this complete message should be sent immediately . . . .’” Id. (citing Ex. 1010, 8–9). That is, RFC 1692 discloses that “large and small TCP segments can be sent in-order by the multiplexing process.” Id. at 4 (citing Ex. 1053 ¶¶ 19–23). In its Sur-Reply, Patent Owner does not dispute Petitioner’s point and its declarant’s, Dr. White’s, testimony that the logical channels in Aldred guarantee order. See generally Sur-Reply; Reply 5; Ex.1053 ¶ 25. Rather, Patent Owner summarizes its position by, again, relying on its large packet argument. Sur-Reply 3 (arguing “smaller items would be removed from the serialization queue and added to the TMux buffer, and larger segments would be transmitted immediately”); see also id. at 3–4 (similar large packet arguments). However, in Aldred, after demultiplexing, to the extent TMux does not maintain packet order, the higher level channel logical channel layer maintains packet order. See Ex. 1009, 6 (defining a channel “by the sending application” and “with application specified transmission characteristics,” and stating “a receiving port . . . receives data packets from the channel in the order in which they were sent”). Furthermore, as Petitioner points out, by contending that combining” slip op. at 37

  Patent outcomesUS 6,226,686 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,226,686
• Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentable
  PTAB · May 14, 2019 · IPR2018-01238 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 are unpatentable under § 103 over Aldred and RFC 1692, with RFC 1459 for certain claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years’ experience related to networked interactive applications,” or “at least a bachelor’s degree in computer science, computer engineering, or physics, and approximately four years’ experience in networking interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 24

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

    “As an initial matter, we agree with Petitioner that Patent Owner “unjustifiably assumes that every embodiment of Aldred would require the use of ‘large’ TCP segments,” but “neither the challenged claims nor Aldred require ‘large’ packets,” wherein “both encompass scenarios where only small packets are generated.” Pet. Reply 7. According to Petitioner, Patent Owner’s “‘large’ packet scenario does not show nonobviousness when the claim and Aldred’s disclosure encompass systems that use only small packets.” Id. at 8 (citing Apple Inc. v VirnetX Inc., IPR2014-00237, paper 41, 40 (PTAB May 11, 2015)). That is, although Patent Owner contends that “Petitioner’s alleged motivation for this combination is based on its small packet centric argument that RFC 1692 provides benefits for systems generating a number of small packets” (PO Resp. 17 (citing Pet. 33)), nothing in the challenged claims preclude a scenario in which small packets are generated. We agree with Petitioner’s contention, to which Patent Owner does not contest, that, in scenarios where only small packets are generated, “[a]n Ordinary Artisan would have understood that Aldred’s system could likewise produce small packets that would benefit from RFC 1692’s multiplexing” (Pet. 33 (citing Ex. 1007 ¶146)) because the Ordinary Artisan would have realized that “[a]s combined with RFC 1692, Aldred’s messages would be multiplexed via TMux (‘aggregat[ed]’) into a single packet (‘aggregated payload’) prior to transmission from the CSP to each member of the serialising channel set associated with the Sharing Set.” Pet. 35 (citing Ex. 1007 ¶¶ 150–151).” slip op. at 35

  Patent outcomesUS 6,226,686 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,226,686
• Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentable
  PTAB · May 14, 2019 · IPR2018-00131 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 are unpatentable under § 103 over Aldred and RFC 1692, with RFC 1459 for certain claims.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.12” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years’ experience related to networked interactive applications,” or “at least a bachelor’s degree in computer science, computer engineering, or physics, and approximately four years’ experience in networking interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 24

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “6. Prior Art Printed Publication Status of RFC 1459, and RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) and RFC 1459 (dated May 1993) were available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 and RFC 1459 qualify as prior art printed publications.” slip op. at 31

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

    “Based on the record before us, we are unpersuaded by Patent Owner’s contention that “Petitioner’s analysis has provided an insufficient bases for the combination of Aldred and RFC 1692.” PO Resp. 15. As an initial matter, we agree with Petitioner that Patent Owner “unjustifiably assumes that every embodiment of Aldred would require the use of ‘large’ TCP segments,” but “neither the challenged claims nor Aldred require ‘large’ packets,” wherein “both encompass scenarios where only small packets are generated.” Pet. Reply 7. According to Petitioner, Patent Owner’s “‘large’ packet scenario does not show nonobviousness when the claim and Aldred’s disclosure encompass systems that use only small packets.” Id. at 8 (citing Apple Inc. v VirnetX Inc., IPR2014-00237, paper 41, 40 (PTAB May 11, 2015)). That is, although Patent Owner contends that “Petitioner’s alleged motivation for this combination is based on its small packet centric argument that RFC 1692 provides benefits for systems generating a number of small packets” (PO Resp. 17 (citing Pet. 33)), nothing in the challenged claims preclude a scenario in which small packets are generated. We agree with Petitioner’s contention, to which Patent Owner does not contest, that, in scenarios where only small packets are generated, “[a]n Ordinary Artisan would have understood that Aldred’s system could likewise produce small packets that would benefit from RFC 1692’s multiplexing” (Pet. 33 (citing Ex. 1007 ¶146)) because the Ordinary Artisan would have realized that “[a]s combined with RFC 1692, Aldred’s messages would be multiplexed via TMux (‘aggregat[ed]’) into a single packet (‘aggregated payload’) prior to transmission from the CSP to each member of the serialising channel set associated with the Sharing Set.” Pet. 35 (citing Ex. 1007 ¶¶ 150–151).” slip op. at 34

  Patent outcomesUS 6,226,686 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,226,686
• Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.No claims unpatentable
  PTAB · May 13, 2019 · IPR2017-02183 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 7 and 8 were not shown unpatentable under any of the three § 103 grounds because the cited combinations did not teach transmitting on a non-assigned timeslot.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner

    “and the specification to determine whether they expressly or implicitly require a specific order. See Altiris, 318 F.3d at 1369–70. Here, we agree with Patent Owner that the language shows that the results of a step are used in the next step; that is, “step 7[b] ‘preparing to transmit a particular payload type in a timeslot’ [comes before] step 7[c] ‘determining whether the timeslot is a current desired timeslot for the TDMA system,’ because the transmitting device looks at the ‘the timeslot’ identified in the ‘preparing’ step to ‘determin[e]’ whether that timeslot is ‘a current desired timeslot.’” PO Sur-Reply 3–4 (quoting Ex. 1001, cl. 7).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the ordered steps 7[c] to 7[e] require transmitting on an alternate timeslot, that is, a timeslot that is not an assigned timeslot. PO Resp. 7–9. The plain language of claim 7 states that the preparing step of limitation 7[b] is for “a timeslot,” indicating that it is broader than the assigned timeslot of the TDMA system. In limitation 7[c], the claim expressly requires a determination of whether the timeslot in the preparing step is the “current desired timeslot” (assigned timeslot) and selecting (limitation 7[d]) the appropriate synch pattern. The “selecting” step of claim 7[d] requires: “if the timeslot is the current desired timeslot, select[] a synchronization pattern selected from the first set of synchronization patterns . . . otherwise select[] a synchronization pattern selected from the second set of synchronization patterns . . . .” The synchronization pattern that is selected in limitation 7[d] is then used during transmission in limitation 7[e]. Thus, although the claims and specification do not explicitly refer to an alternate timeslot, the claim requires transmitting on the timeslot that is not the current desired timeslot (assigned timeslot). See PO Resp. 19–20; Ex. 2008 ¶ 89.” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “arguments are directed to products produced by Petitioner, rather than by Patent Owner, products that were found in an Initial Determination (“ID”) of the International Trade Commission (“ITC”) to infringe challenged claims 7 and 8 of the ’991 patent. Ex. 2009, 192–202. In addition, the Administrative Law Judge in that ID found that Petitioner intentionally copied Patent Owner’s patented technology. Id. at 226–228. That finding was based, in part, upon an adverse inference drawn from the repeated invocation of the Fifth Amendment when former employees of Patent Owner were questioned about allegations that they downloaded confidential documents of Patent Owner shortly before becoming employed by Petitioner. Id. at 241–242 (citing LiButti v. United States, 107 F.3d 110, 123–24 (2d Cir. 1997)). In addition to Patent Owner’s detailed discussion of how Petitioner’s products embody all limitations of the challenged claims, these specific administrative findings support Patent Owner’s position that there is sufficient nexus between its evidence and the challenged claims. PO Resp. 57–62; Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).” slip op. at 27

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by this argument. Petitioner’s arguments go to the weight that should accorded to the ID, not to its admissibility. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As Patent Owner responds, the ITC “determined not to review the portions of the ID’s findings regarding the ’991 patent.” Paper 43, 4. And we agree with Patent Owner that Petitioner’s argument that the Final Determination is subject to approval by the President lacks merit because the President did not act on the Final Determination within the period specified by 19 U.S.C. § 1337(j)(2). Id. at 4–5. The ID recounts evidence that has been considered and evaluated by an objective and disinterested judge, and articulates findings that are relevant to whether there is a sufficient nexus between the challenged claims and Patent Owner’s evidence regarding Petitioner’s products. The ID is also relevant to the issue of copying by Petitioner. Although Petitioner asserts that the ID is prejudicial or confusing, it provides insufficient argument to support those assertions. With respect to Exhibits 2010, 2012–2019, and 2021, Petitioner contends that these exhibits are Hytera advertising and marketing documents, which do not supply sales numbers or third-party praise to prove commercial success. Paper 40, 3–4. Again, this argument relates to the weight to be accorded to that evidence, not to its admissibility. As we note above, we agree with Petitioner that these factors impact the appropriate weight to be accorded to the evidence, and we have accounted for that impact. Finally, we deny Petitioner’s request that Exhibit 2020 should be excluded under Fed. R. Evid. 401 and 402 because Patent Owner’s demonstrative slides in Exhibit 2020 rely on Exhibits 2010, 2012–2019, and 2021. As the Board reminded the parties in its Order granting oral argument, “[d]emonstrative exhibits are not evidence.” Paper 44, 3. Exhibit 2020 is merely a demonstrative and is not evidence.” slip op. at 32

  Patent outcomesUS 8,279,991 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,279,991

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.