• SAP SE v. Teradata US, Inc.Institution denied
  PTAB · Dec 1, 2021 · IPR2021-01017 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show the claimed file management context in non-persistent memory.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’419 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that a person of ordinary skill in the art at the time of the invention “would have possessed at least a Bachelor’s degree in computer science with at least two years of experience with database system development.” Pet. 14 (citing Ex. 1006 ¶¶ 21–22). Petitioner further contends that a person of ordinary skill in the art could have had “some combination of (1) more formal education and less technical experience, or (2) less formal education and more technical or professional experience.” Id. (citing Ex. 1006 ¶¶ 21–22). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’419 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Petitioner contends that no claim terms require explicit construction at this stage of the proceeding. Pet. 16. Patent Owner contends that in related district court litigation, Petitioner has proposed construing several terms in accordance with pre-AIA 35 U.S.C. § 112 ¶ 6, and Patent Owner faults Petitioner for not applying those constructions in the Petition. Prelim. Resp. 7–8. Based on the record before us, we need not construe any claim terms expressly to decide the issues presented at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “does not show sufficiently that the combination of System R and Lorie teaches a “file management context” stored in “non-persistent memory.” See Prelim. Resp. 16–22. As an initial matter, Petitioner asserts that the “Current Page Table and associated data structures such as free-space bit maps” comprise the claimed “file management context” in “non-persistent memory,” but Petitioner does not cite any passage in System R disclosing that the current page table (or any associated data structure) resides “in memory” rather than “on disk,” as shown in Petitioner’s annotated version of System R’s Figure 7. See Pet. 28–35. Nor does Petitioner point to any disclosure in Lorie in support of its contention that the current page table in the System R database system is stored in non-persistent memory. See id.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,904,419
• SAP SE v. Teradata US, Inc.Instituted
  PTAB · Nov 17, 2021 · IPR2021-00855 · APJ Lynne E Pettigrew · IPR · Institution

  Instituted IPR of claims 1–7, 26–33, and 52–57 on all asserted grounds after finding a reasonable likelihood of prevailing on obviousness over Deshpande ’98 and Shim.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’357 patent. Accordingly, we institute an inter partes review of claims 1–7, 26–33, and 52–57 of the ’357 patent on the grounds asserted in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “privy.”). Accordingly, we determine that this factor does not weigh either for or against exercising our discretion to deny institution in this case.” slip op. at 29

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

    “would have been motivated to combine the teachings of Deshpande ’98 and Shim for a variety of reasons, most notably because Deshpande ’98 explicitly states that in-cache aggregation is the next logical step in multi-dimensional cache development, and Shim advantageously provides an implementation of that aggregation suggested by Deshpande ’98. Pet. 38. Thus, Petitioner contends, a person of ordinary skill in the art “would have been explicitly directed to look for opportunities to improve on Deshpande ’98’s system via in-cache aggregation,” and that direction would have naturally led to Shim. Id. at 39 (citing Ex. 1006 ¶ 98). Relying on Dr. Lehner’s testimony for support, Petitioner contends that “[a]ccessing data from cache memory is well known to be significantly faster than accessing data from a database,” “[i]n-cache aggregation [as taught in Shim] increases the amount of cached data that is eligible for answering a current query,” “[m]ore eligible cache data . . . results in more cache hits,” and “a greater number of cache hits results in faster average performance.” Id. at 39–40 (citing Ex. 1006 ¶¶ 99–100). Petitioner also notes that Shim cites to Deshpande ’98. Id. at 41 (citing Ex. 1003, 10). Finally, Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success in implementing the combination of Shim and Deshpande ’98 in view of Shim’s example descriptions and pseudocode algorithms. Id. (citing Ex. 1006 ¶ 102).” slip op. at 20

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

    “this stage of the proceeding. Pet. 16. Patent Owner agrees that most terms do not require construction, but disagrees as to the term “active cache,” recited in independent claims 1, 26, and 28. Prelim. Resp. 9. Patent Owner proposes construing that term to mean a “cache that can not only answer queries that match data stored in the cache, but can also answer queries that require aggregation or other computation of the data stored in the cache,” in accordance with the ’357 patent’s description of an “active cache.” Id. at 10; see Ex. 1001, 3:1–5. As Patent Owner points out, the Petition acknowledges that description of an “active cache” in the ’357 patent and appears to apply such a construction in its unpatentability analysis. Prelim. Resp. 9–10 (citing Pet. 35, 72). In view of the ’357 patent’s description of an “active cache,” at this stage of the proceeding we adopt the proposed construction of “active cache” as a “cache that can not only answer queries that match data stored in the cache, but can also answer queries that require aggregation or other computation of the data stored in the cache.” During trial, if appropriate, the parties may further address the construction of this term.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,763,357
• SAP SE v. Teradata US Inc.Instituted
  PTAB · Nov 15, 2021 · IPR2021-00863 · APJ Russell E Cass · IPR · Institution

  Instituted review of claims 1–3, 5–9, 11–13, 15, and 17–19 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “1. “Data Temperature” Petitioner argues that the term “data temperature” in claims 2–3, 8–9, and 12–13 “includes any value representing the number or frequency of accesses of particular data in storage, either in absolute or relative terms.” Pet. 11–12 (citing Ex. 1001, 8:44–47, 15:37–42, 18:24–27; Ex. 1003 ¶ 34). Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. Prelim. Resp. 17. At this stage of the proceeding, and based on the present record, we adopt Petitioner’s proposed construction of this term.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “At this stage of the proceeding, and based on the present record, we determine that Petitioner’s three proposed constructions of “persistent data temperature” are reasonable and, as discussed further below, that Petitioner has established a reasonable likelihood that “persistent data temperature” is disclosed or suggested by the prior art under any of the three constructions. For purposes of institution, we need not determine which of these three proposed constructions is correct; however, the parties may address this issue further if appropriate during the trial. 3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience.” Pet. 9 (citing Ex. 1003 ¶ 30). According to Petitioner, the person of ordinary skill would have been familiar with “DRAM cache, flash or other solid-state storage device[s], tape, optical media, and other well-known storage types,” “[c]oncepts of data ‘temperature,’” “[m]ulti-level storage tiers and managing data storage between volatile devices (e.g., cache) and non-volatile devices (e.g., disk) based on temperature,” and “[w]ell-known concepts such as volatile storage, non-volatile storage, and data persistency.” Id. at 9–10 (citing Ex. 1005, 2:23–38, 5:65–6:3, 21:33–43, 25:21–62; Ex. 1010 ¶¶ 3–4; Ex. 1004 ¶¶ 18– 52; Ex. 1001, 8:7–13). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 17. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’623 patent and the asserted prior art of record.” slip op. at 10

  • Expert testimonyPetitioner expert creditedOther

    “sufficiently established that Morris inherently discloses this element based on the evidence of record. Petitioner does not point to specific portions of Morris that expressly state that storage information associated with storage of data in the disk drive (such as temperature values 420 in Figure 4) are provided to the cache, or that indicate that this step is necessarily present in Morris’s system. For example, it appears that there might be other places for storing temperature information or other ways of providing that information to the cache. Additionally, Dr. Long does not explain why one of ordinary skill would have “necessarily” understood that Morris’s process would have checked data HEADER 410 in Figure 4 to see if it contained a temperature value, and then used this temperature value as part of the Figure 2 steps, rather than obtaining the temperature value from another source. However, we determine that, for purposes of institution, Petitioner has sufficiently shown that element 1.3 would have been obvious over Morris. Petitioner’s obvious argument is supported by Dr. Long’s testimony that, when using data temperature to determine whether data should be stored in the cache (as reflected in Figure 2), it would have been obvious to “check[] the data ‘HEADER’ (410 in FIG. 4) to see if it contained a ‘temperature value’ (420 in FIG. 4), and then us[e] this temperature value as part of the FIG. 2 steps.” Ex. 1003 ¶ 51. As Dr. Long explains, data objects 400 with headers 410 and temperature values 420 in Figure 4 are “stored on a disk drive.” Id. ¶ 46. Dr. Long further testifies that one of ordinary skill “would have recognized the expressly disclosed ‘temperature value’ variable” 420 stored on the disk “as the best measure of a given data object’s temperature and the first place to check for whether a disk-stored data object had an associated temperature.” Id. “Given the express disclosure of this [temperature value] variable” 420, Dr. Long continues, it “would have been a natural choice” for the person of ordinary skill in the art to use it “when evaluating whether to cache data being read from the disk,” and one of ordinary skill would have had a reasonable expectation of success in doing so. Id. Contrary to Patent Owner’s argument, this testimony provides logical reasons why one of ordinary skill would have provided the temperature value from the disk to the cache, and is not merely “conclusory.” We reach a similar determination as to Petitioner’s obviousness argument based on the process for determining whether data should be deleted from the cache in Morris’s Figure 3. Petitioner’s argument is supported by Morris’s statement that “[t]he data temperature is stored with the data object in the cache,” and Dr. Long’s testimony that it would have been obvious to have “this data temperature in the cache originate[] from the ‘temperature value’ retrieved from the disk when originally storing the data in the cache.” Ex. 1004 ¶ 53; Ex. 1003 ¶ 54. Dr. Long further explains that “it would have been obvious to implement the Morris system in this way because the temperature maintained on the disk was the most natural source for the value of the data temperature stored in the cache,” and one of ordinary skill “would have used that approach with a reasonable expectation of success.” Ex. 1003 ¶ 54. “In fact,” according to Dr. Long, “given that the temperature value was persistently stored with the data on the disk,” the disk “was the only logical source for a reliable temperature value when deciding whether to load the data into the cache,” because “[a]ny other source would have risked being inaccurate or out of date and would have needlessly and redundantly stored the temperature in another location.” Id. This testimony provides logical reasons why one of ordinary skill would have provided the temperature value on the disk to the cache.” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,720,623
• SAP SE v. Teradata US Inc.Instituted
  PTAB · Nov 15, 2021 · IPR2021-00861 · APJ Russell E Cass · IPR · Institution

  The Board instituted IPR on claims 1–16 and all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “Based on the present record, we do not find Patent Owner’s proposed construction supported by the intrinsic evidence. The ordinary meaning of “manage the storage of data in the volatile storage” does not require limiting the number of copies of the data in the volatile storage, and Patent Owner does not argue to the contrary. Turning to the language of the other claims, we note that claim 5, which depends from claim 1, specifically includes additional language stating that the data is stored “only in one of two portions of the volatile storage,” but claim 1 does not include such language. The use of this additional limitation in dependent claim 5 suggests that the inventors did not intend it to be included within claim 1’s broader language reciting “manag[ing] the storage of data in the volatile storage.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315–16 (Fed. Cir. 2005) (en banc) (“the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim”). Turning to the ’923 patent specification, the portions of the specification Patent Owner relies on appear to discuss a preferred embodiment of the invention, rather than limiting the invention itself. The portions of columns 14 and 15 upon which Patent Owner relies discuss Figure 3 which, the specification explains, “depicts a volatile storage 300 that uses a persistent temperature-based storage management technique as well as a conventional storage management technique in accordance with one embodiment.” Ex. 1001, 14:48–51 (emphasis added); see id. at 5:5–8 (also describing Figure 3 as being “in accordance with one embodiment” of the invention). Interpreting claim 1 to require maintaining only a single copy of a data portion in either the first portion or second portion, where that language does not exist in claim 1, would be tantamount to reading a limitation from a preferred embodiment into the claims, which would be improper. See Philips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Patent Owner does not identify any portions of the specification suggesting that limiting the number of copies of the data in the volatile storage is a necessary part of the invention, or that the inventors intended to expressly or impliedly define “manage the storage of data in the volatile storage” to include this requirement. Consequently, at this stage of the proceeding, we do not adopt Patent Owner’s proposed construction requiring that “manag[ing] the storage of data in the volatile storage” requires “coordinating placement of data into and out of the volatile storage so as to limit the number of copies of the data in the volatile storage.” The parties may further address the meaning of this claim phrase during the trial, if appropriate.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working 2 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience as it typically involves at least two years of additional study focused exclusively on computer science, as well as a thesis or project spanning several terms to implement a substantial project.” Pet. 12–13 (citing Ex. 1003 ¶ 31). According to Petitioner, the person of ordinary skill would have “understood the advantages of partitioning a volatile memory into multiple different sections (e.g., buffer pools) and applying multiple different storage management (e.g., cache replacement) policies to those different sections, and known how to implement such designs.” Id. at 13 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 14. For purposes of institution, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’923 patent and the asserted prior art of record.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “At this stage of the proceeding, Petitioner has made a sufficient showing that Lee discloses this claim element. Paragraph 17 of Lee discloses the use of a temperature-based storage management technique and a non-temperature-based storage management technique (the LRU replacement policy), and that both “may be used to manage a cache.” Ex. 1004 ¶ 17. Based on the present record, Petitioner sufficiently shows that Lee’s disclosure of using these techniques “to manage a cache” involves “manag[ing] the storage of data in” the cache, because both techniques operate in order to control what data is stored in the cache. We do not find Patent Owner’s argument persuasive because it is based on Patent Owner’s proposed construction of “manag[ing] the storage of data in the volatile storage” to require “limit[ing] the number of copies of the data in the volatile storage,” which we do not adopt. See § II.A.2, supra. Consequently, we determine that, on the record before us, Petitioner’s cited evidence sufficiently supports its contentions regarding this limitation.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,851,923
• Hewlett Packard Enterprise Company / Aruba Networks, LLC et al. v. Q3 Networking LLCInstitution denied
  PTAB · Oct 8, 2021 · IPR2021-00754 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution of inter partes review of claims 1–10, 12, and 13 under § 314(a), finding the Fintiv factors favored denial because the ITC proceeding was advanced and substantially overlapped.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “The Board’s precedential decision in Fintiv sets forth the following factors the Board balances when determining whether to exercise its discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. “[I]n evaluating the factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 7

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

    “We determine that the merits of the Petition are not so strong as to outweigh the other Fintiv factors we consider here. Under these circumstances, we view this factor as neutral. C. Conclusion Based on the particular circumstances of this case, we determine that instituting an inter partes review is not appropriate under the standard set forth in Fintiv. As discussed above, the Final Determination in the parallel ITC proceeding is due six months before a final written decision would be due if we did institute an inter partes review, and the issues presented in this proceeding substantially overlap those issues in the parallel ITC proceeding. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 12

  Discretionary denial
  Patents in suitUS 8,797,853
• Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.Institution denied
  PTAB · Sep 16, 2021 · IPR2021-00558 · APJ Hyun J Jung · IPR · Institution

  Institution was denied for claims 13, 17, 19, and 20 because the Petition did not show a reasonable likelihood of prevailing on either asserted obviousness ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art “would have had Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 9–10 (citing Ex. 1003 ¶ 19). Petitioner also argues that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. at 10 (citing Ex. 1003 ¶ 19). Patent Owner does not address Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. See generally Prelim. Resp. Based on the record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the” slip op. at 8

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

    “Petitioner argues that “[a]s of the filing of this Petition, no party has alleged instances of specialized claim terms requiring departure from the plain and ordinary meaning” and that “no formal construction is necessary in this proceeding.” Pet. 10. Patent Owner responds that “data packet” is a “key term” for which Petitioner fails to apply the ordinary and customary meaning and proposes an interpretation with citations to the record. Prelim. Resp. 12–18 Because our analysis below does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • BurdenNot shown unpatentable

    “As pointed out by Patent Owner (Prelim. Resp. 19–20), Petitioner’s relied-upon portions of Raleigh relate only to symbols. See Pet. 20–23. The cited portions of Raleigh explicitly describe and show “symbols,” “a digital symbol stream,” “symbol outputs,” and “data symbols.” Ex. 1004, 6:57–62 (describing “symbols from one subchannel do not substantially interfere with symbols from another subchannel”), 16:8–24 (describing spatial processing of symbols), 16:36–47 (describing the acceptance of inputs), 16:59–61 (describing received signal sample depending on input symbols), 17:16–39 (describing “substantially independent multiple streams of symbols”), 23:3–38 (describing “a digital symbol stream” and “symbol outputs”). Petitioner, however, does not further argue or provide additional evidence that Raleigh’s symbols teach or suggest the recited “data packets.” See Pet. 20–23. Petitioner’s declarant testimony also does not explain further the arguments or evidence presented in the Petition and does not provide additional evidence beyond that cited in the Petition. See Ex. 1003 ¶¶ 76–80. Other than Raleigh and declarant testimony, Petitioner does not point elsewhere in the record for the recited “data packet.” See Pet. 20–23. Because Petitioner does not explain or point to evidence in the record that symbols would be understood to teach or suggest the recited data packets, Petitioner does not show sufficiently that Raleigh teaches or suggests “transmitting, by the primary station, substantially simultaneously, a plurality of data packets to the secondary station, the data packets being transmitted via different subsets of the plurality of paths,” as required by independent claim 13.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,178,577
• Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.Institution denied
  PTAB · Sep 3, 2021 · IPR2021-00559 · APJ Hyun J Jung · IPR · Institution

  The Board denied institution because Quectel did not show a reasonable likelihood of proving claims 19–21, 33, and 35–42 unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “For the reasons above, Petitioner does not show that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art “would have had Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 14 (citing Ex. 1003 ¶ 19). Petitioner also argues that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶ 19). Patent Owner does not address Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. See generally Prelim. Resp. skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’599 patent and the prior art of record. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 8

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

    “Petitioner argues that “[a]s of the filing of this Petition, no party has alleged instances of specialized claim terms requiring departure from the plain and ordinary meaning” and that “no formal construction is necessary in this proceeding.” Pet. 14. Patent Owner responds that “data packet” is a “key term” for which Petitioner fails to apply the ordinary and customary meaning and proposes an interpretation with citations to the record. Prelim. Resp. 13–18. Because our analysis below does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in” slip op. at 9

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

    “Petitioner fails to provide sufficient reasons for modifying Raleigh in view of Fong. Petitioner argues that, from Raleigh alone, one of ordinary skill in the art “would have understood that the Reed Solomon codewords are used to determine whether the secondary station correctly received the data packets, and if not, a retransmission is requested.” Pet. 27 (citing Ex. 1003 ¶ 93; Ex. 1004, 23:36–44). Petitioner then argues that one of ordinary skill in the art would have combined Raleigh and Fong to “provide[] a system where a secondary station (receiver) can determine whether data is correctly received so that data can be retransmitted, as needed.” Id. at 28. contends is already present in Raleigh. See Pet. 27–28. Petitioner’s other asserted reason, applying the known technique of “determining whether data is corrected received at a receiver” to Raleigh’s known system, also does not address adequately why one of ordinary skill in the art would have modified Raleigh for a feature that Petitioner argues Raleigh already has. See id. at 28. Petitioner’s final reason likewise does not address why one of ordinary skill in the art would have modified Raleigh for a feature that Petitioner argues Raleigh already has. See id. at 29. Additionally, Petitioner’s asserted reasons for combining Raleigh and Fong do not address modifying Raleigh to transmit positive acknowledgements. Petitioner refers to its arguments for “determining, by the secondary station, whether each data packet is received correctly” to contend that “the resulting Raleigh system (as modified according to Fong’s suggestion) would provide this notifying operation.” See Pet. 30 (citing Ex. 1003 ¶ 98). As discussed above, Petitioner’s reasons for modifying Raleigh in view of Fong’s suggestion address only determining whether data is received correctly by the receiver. See Pet. 28–29 (citing Ex. 1003 ¶ 95). Petitioner’s reasons for modification do not go on to address why Raleigh must be modified to transmit positive and negative acknowledgments, even though Raleigh already provides for retransmission without such acknowledgements. See id.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,635,599
• TCL Industries Holdings Co., Ltd. v. Koninklijke Philips N.V.Institution denied
  PTAB · Aug 31, 2021 · IPR2021-00547 · APJ Russell E Cass · IPR · Institution

  The Board denied institution because TCL did not show a reasonable likelihood that claims 22–31 would have been obvious over the asserted combinations.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (footnote omitted). For the reasons provided below and based on the record before us, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “We do not find that Petitioner has articulated sufficient reasoning for combining Maillard with Davis and Lundkvist based on the present record. First, Petitioner’s assertion that the references “all relate to providing secure access that is conditioned on successful completion of exchanges between two devices” (Pet. 31), fails to sufficiently explain why one would have used a distance measurement in Maillard’s system. Second, Petitioner’s argument that Davis recognizes the vulnerability of smartcard systems when a user leaves a computer unattended (Pet. 31), fails to sufficiently explain why this problem would apply to Maillard’s system, i.e., why it would be a problem for the user to leave the security module unattended while connected to the DVD player.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in Computer Science, Computer Engineering, or Electrical Engineering and 1– 2 years of industry or research experience in the area of secure cryptographic communications.” Pet. 14. Petitioner further asserts that “[t]his description is approximate and additional education could make up for less work experience and vice versa.” Id. (citing Ex. 1003 ¶¶ 105–108). At this stage of the proceeding, Patent Owner does not set forth a definition of the level of ordinary skill. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’977 patent and the asserted prior art of record.” slip op. at 10

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

    “standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Petitioner states that, “for the purposes of this Petition, the claim terms are to be understood according to their plain and ordinary meaning.” Pet. 15. Patent Owner does not provide any proposed claim constructions at this stage of the proceeding. See generally Prelim. Resp. Based on our review of the Petition and Preliminary Response, we do not believe that any claim terms require express construction at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective as of March 16, 2013. The application for the ’977 patent was filed after March 16, 2013, but includes a priority claim to an application filed before this date. Ex. 1001, code (22), (63). Petitioner asserts that the ’977 patent has an effective filing date of June 27, 2003, and Patent Owner asserts that the ’977 patent has a priority date of July 26, 2002. Pet. 7; Prelim. Resp. 4. For purposes of institution, we apply the pre-AIA versions of 35 U.S.C. § 103. (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).3” slip op. at 8

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,590,977
• ROKU, Inc. v. Universal Electronics, Inc.Rehearing denied
  PTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing

  The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence that could have been presented in the Petition.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 8,015,446
• Polycom, Inc. v. Directpacket Research, Inc.All claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01235 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–23 are unpatentable as obvious under §103 over Krtolica and Rosenberg, with Eisenberg and DSDP added for certain dependent-claim grounds.

  RulingsFinal written decision

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

    “with the claim language itself, we agree with Petitioner that the ordinary meaning of “multimedia communication data” is data related to multimedia communication, and that this may comprise signaling data required for communicating multimedia between two or more locations. We see nothing in the claim language that requires that data must include the underlying media content itself (such as video or voice signals) in order to qualify as “multimedia communication data.” We also are not persuaded by Patent Owner’s argument that Petitioner’s construction of “multimedia” “means no media” (PO Supp. 1 (emphasis omitted)), because Petitioner is not arguing that media content cannot be present, but instead is simply arguing that media content is one type of “multimedia communication data,” with” slip op. at 12

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

    “each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (A finding of a motivation to combine “must be supported by a ‘reasoned explanation.’” (citation omitted)). D. Ground 1: Obviousness over Krtolica and Rosenberg — Claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 Petitioner contends that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable as obvious under 35 U.S.C. § 103(a) over Krtolica and Rosenberg. Pet. 30–70. For the reasons that follow, Petitioner has demonstrated by a preponderance of the evidence that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable on this ground. 1. Overview of Krtolica Krtolica is directed to a system that sends information data packets” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “H. Objective Indicia of Nonobviousness Patent Owner also presents arguments and evidence of objective indicia or secondary considerations of nonobviousness. PO Resp. 51–57; PO Sur-Reply 19–22. Objective indicia of nonobviousness may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, industry praise, and expert skepticism. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012). “[O]bjective indicia ‘may often be the most probative and cogent evidence of nonobviousness in the record,’” and “help turn back the clock and place the claims in the context that led to their invention.” Id. at 1378 (quoting Ortho–McNeil Pharm. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008)). Evidence of objective indicia of nonobviousness “must always when present be considered en route to a determination of obviousness.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012); see also Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc). Objective indicia of nonobviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia of nonobviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of nonobviousness to be accorded substantial weight, their proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). That is, presuming nexus is appropriate “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand, the patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. However, “[a] finding that a presumption of nexus is inappropriate” slip op. at 82

  • ExcludeMotion to exclude, grantedGranted

    “highly confidential source for the STNS system, and seeks to seal that identification. Paper 29, 1. The Motion is unopposed. We have reviewed the redacted portion of the document, as well as the explanations of the confidential nature of the materials for which sealing is sought, as discussed in the Motion. We grant the Motion and the associated request to enter the Protective Order.” slip op. at 92

  Patent outcomesUS 8,560,828 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,560,828

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.