• Apple Inc. / Fitbit, Inc. v. Valencell, Inc.Some claims unpatentable
  PTAB · Aug 6, 2018 · IPR2017-00319 · APJ James B Arpin · IPR · Final written decision

  Claims 1–2 and 6–13 are unpatentable as obvious; claims 3–5 were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “demonstrated by a preponderance of the evidence that claims 1, 2, and 6–13 of the ’941 patent are unpatentable based on the challenges asserted in the Petition, but that Petitioner fails demonstrated by a preponderance of the evidence that claims 3–5 of the ’941 patent are unpatentable based on the challenges asserted in the Petition. In particular, we determine that:” slip op. at 77

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “1. “physiological information” (Claims 1–13) Petitioner argues that the Specification of the ’941 patent provides an” slip op. at 10

  • ExcludeOther

    “Although Patent Owner filed objections to evidence submitted with the Petition (Paper 14) and Petitioner filed objections to evidence submitted with Patent Owner’s Preliminary Response (Paper 12) and to evidence submitted with the Patent Owner Response (Paper 23), neither party filed a Motion to Exclude. Consequently, these objections are deemed waived. 37 C.F.R. § 42.64(c) (“A motion to exclude evidence must be filed to preserve any objection.”). Petitioner also filed a list of alleged” slip op. at 3

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “IV. PROCEDURAL ISSUES Patent Owner objects to the use of inter partes reviews as unconstitutional based, at least, upon the reasons presented in the petition for certiorari that was granted in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. PO Resp. 38; see Reply 21. On April 24, 2018, the U.S. Supreme Court upheld the constitutionality of inter partes review; thus, Patent Owner’s arguments are moot. Oil States Energy Servcs. LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365, 1370 (2018).” slip op. at 78

  Patent outcomesUS 8,923,941 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 8,923,941
• EMC Corporation v. Actividentity, Inc.All claims unpatentable
  PTAB · Jul 2, 2018 · IPR2017-00338 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1, 3, 5, 7–9, 11, 13, 15, 16, and 19 are unpatentable as anticipated by Wood and obvious over Wood combined with Neuman IETF.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Exclusive Licensee’s Response does not appear to identify or provide any assessment of the level of skill possessed by an ordinary artisan in the field of the claimed invention at the time of filing. Exclusive Licensee’s declarant, Dr. David Goldschlag, however, testifies that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent field with three or four years of academic or industry experience in communications. This assessment would include a person with a master’s degree in the aforementioned fields with coursework in computer network security and one or two years of experience in communications. Ex. 2007 ¶ 20. We find that a person of ordinary skill in the art in the field of the ’685 patent is a person who has a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent field and 3–4 years of professional or academic experience in computer systems, network security, or network communications, or a master’s or doctorate degree and 1–2 years of professional experience in computer systems, network security, or network communications, or equivalent academic experience. C. Prior Art References and Alleged Grounds of Unpatentability” slip op. at 9

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

    “The ’685 patent does not define expressly the term “security policy.” Petitioner’s proffered construction, that a “security policy” is “rules specifying conditions for accessing a secure resource,” is generally consistent with the use of the term in the Specification, including the claims. For example, the Specification explains “[i]n dependence upon the security policy . . . an authorization method . . . is selected.” Ex. 1001, 7:50–54. The Specification also explains, “the authorization method is varied because a security policy . . . is different.” Id. at 6:3–7. The Specification provides some examples of the parameters or conditions that a security policy considers. For instance, a security policy may consider the requested time of access, and may indicate that no access is provided between the hours of midnight and 6:00 a.m. Ex. 1001, 7:55–58. The Specification indicates that a security policy may vary based on the location of the user requesting access. Id. at 9:55–62. The Specification also indicates a security policy may require the use of different user authentication devices. Id. at 8:23–45, 9:8–15, 9:28–37; Ex. 1002 ¶ 42. Therefore, we determine that the broadest reasonable interpretation of the claim term “security policy” consistent with its use in the ’685 patent is “a rule or set of rules specifying conditions for accessing a secure resource.”” slip op. at 7

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

    “Exclusive Licensee’s arguments, however, are unavailing. Wood’s Figure 4 and the accompanying text demonstrate that Wood discloses recording (encoding) the received user identification data. Figure 4 of Wood, shown below, illustrates relations between login credentials, session credentials and a cookie encoding of a session token. Ex. 1011, 4:15–16. Figure 4 of Wood shown above, annotated by Petitioner, shows the encoding of login credentials. As Wood explains, [t]ypically, login credentials encoded in login credentials structure 410 are obtained from a principal via browser client and serve as evidence that the principal (e.g., a human user) is entitled to a particular identity. Accordingly, login credentials structure 410 encodes a userId and a domainId within which the userId should uniquely correspond to a principal. Specific login credentials, e.g., a password, a certificate, results of a biometric process, a response to an Enigma challenge or results of a smart card interrogation, etc. are encoded in login credentials structure 410, as a tagged value. . . . Of note, principal ids, authorizations and other contents encoded in the session credential may be read by components of the security architecture, . . . security architectures employing facilities described herein ensure that information contained in the session credential is provably constant once set by an authentication service. . . . . . . . Referring again to session credentials structure 420, a session id, a principal id, a trust level, group ids, a creation time and an expiration time are encoded in both in encrypted portion 421 and clear text portion 422. The session id is a unique identifier for a persistent session maintained by the security architecture. . . . Principal id encodes an identifier for a principal to which the security architecture has resolved login credentials. For example, a login credential including a username jdoe and a password corresponding to jdoe may be resolved by the security architecture to a unique principal id associated with John. Q. Doe of the shipping and receiving department, having an employee badge number of 12345, etc.” slip op. at 26

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

    “Exclusive Licensee appears to conflate Petitioner’s arguments. Petitioner first argues that it would have required no more than routine skill in the art to combine the teachings of Wood and Neuman IETF, because Neuman IETF’s framework was designed expressly to be adapted for integration with many different types of systems for authorizing users to access resources. Pet. 62. Petitioner then argues that a person of ordinary skill would have had reason to do so because he would have readily recognized that the risk associated with access requests differ with time, location, and/or type of communication link. Id. at 65. Petitioner argues that a person of ordinary skill would have understood that by taking these factors into account, an access control system can achieve more fine-grained access control that can be tailored according to different circumstances. Id. Petitioner points out that Wood describes such a rationale. Id. (citing Ex. 1011, 2:49–55; Ex. 1002 ¶ 154). Petitioner, therefore, provides a rational basis to combine Wood and Neuman IETF along with sufficient reason to do so. Whether Neuman IETF expressly uses the word “risk” is of no moment, as long as a person of ordinary skill in the art would have appreciated the benefits of combining the teachings of Wood and Neuman IETF and would have had reason and the ability to do so. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). d. Conclusion on Claims 1, 9, and 19 We find, on the basis of the evidence and explanation provided by Petitioner, that the combination of Wood and Neuman IETF teaches or suggests the recited limitation “determining a security policy from a plurality of predetermined security policies based on previously stored policy data and the received indication of the type of communication link between the workstation and the security server, the geographic location of the workstation, or the time of access of the workstation” of independent claim 1, and similarly recited limitations of independent claims 9 and 19. For the reasons stated above, we are persuaded that Petitioner has shown by a preponderance of the evidence that the combination of the teachings of Wood and Neuman IETF teaches or suggests all of the limitations recited by independent claims 1, 9, and 19 and that a person of ordinary skill in the art at the time of invention would have had reason to combine the teachings of the references.” slip op. at 43

  Patent outcomesUS 9,098,685 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,098,685
• Apple Inc. / Fitbit, Inc. v. Valencell, Inc.All claims unpatentable
  PTAB · Jun 5, 2018 · IPR2017-00321 · APJ James B Arpin · IPR · Final written decision

  Claims 14–21 are unpatentable as obvious; the Board denied the contingent motion to amend substitute claims 22–29.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “review of claims 14–21 (“the challenged claims”) of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311– 319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted the instant inter partes review as to the challenged claims.2 Paper 11 (“Inst. Dec.”). Fitbit, Inc. (also “Petitioner”) filed a corresponding Petition (IPR2017-01556, Paper 2), accompanied by a Motion for Joinder (IPR2017-01556, Paper 3), challenging claims 14–21 of the ’941 patent, and we granted the Motion for Joinder and instituted review of the challenged claims based on the corresponding Petition (IPR2017-01556, Paper 9).” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;5 and (4), when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.6 Graham v. 5 Petitioner proposes an assessment of the level of ordinary skill in the art. Pet. 11; see Ex. 1003 ¶ 54. Petitioner’s declarant, Dr. Sarrafzadeh, and Patent Owner’s declarant, Dr. Pollonini, exceeds this assessed level. Ex. 1004; Ex. 2010 ¶¶ 6–11. Patent Owner does not contest Petitioner’s assessment or propose an alternative assessment. See MTA 11. To the extent necessary, we adopt Petitioner’s assessment. 6 In the instituted proceeding, Patent Owner does not raise arguments or present evidence based on the presence of such objective evidence of nonobviousness. See In re Applied Materials, 692 F.3d 1289, 1299 (Fed. Cir. 2012) (“The party seeking the patent bears the burden to overcome the prima facie case of obviousness with evidence of secondary considerations, such as commercial success.”); Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00087, 2015 WL 1546574, at *11 (PTAB 2015) (“Although it is Patent Owner's burden to introduce evidence supporting such objective indicia, see In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996), the ultimate burden of persuasion never shifts to Patent Owner, see 35 U.S.C. § 316(e).”), aff’d, In re Nuvasive, Inc., 689 Fed. Appx. 954 (Fed. Cir. 2017); but see Prelim. Resp. 4–6. Therefore, this factor does not play into our analysis of Petitioner’s challenges to any claim on any ground. John Deere Co., 383 U.S. 1, 17–18 (1966). Nevertheless, the Supreme Court cautions us against “the temptation to read into the prior art the teachings of the invention in issue.” Graham, 383 U.S. at 36.” slip op. at 12

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

    “6. “PPG sensor” (claims 14–21) In the Institution Decision, we adopted Patent Owner’s proposed construction of the term “PPG sensor” as the broadest reasonable interpretation of the term. Id. at 10–11. In the Patent Owner Response, Patent Owner proposes a slight modification to this interpretation (PO Resp. 9), to which Petitioner does not object (see Reply 1–4). Patent Owner now contends that the broadest reasonable interpretation of the term “PPG sensor” is “an optical sensor which obtains a plethysmogram that results from blood flow modulations caused by the subject’s heartbeat.” PO Resp. 9 (emphasis added); see Ex. 2005, 1. We agree that the term should include express reference to “an optical sensor,” rather than merely to “an optically obtained plethysmogram.” Inst. Dec. 10; see Ex. 1001, 1:64–2:6. We determine that our previous construction, as modified by Patent Owner, is the broadest reasonable interpretation of this term.” slip op. at 10

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

    “have had reason to combine the teachings of Kosuda and Maekawa in the manner proffered by Petitioner. Initially, we note that although Patent Owner has suggested an alternative solution to the signal-to-noise problem, neither Patent Owner nor its declarant provides support for their contention that the alternative solution is superior to that taught by the combination of the teachings of Kosuda and Maekawa. See PO Resp. 24; Ex. 2010 ¶ 90. But even if it had, as Petitioner notes, “the law does not require that a particular combination be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the claimed invention.” Reply 8; see In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“The question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” (emphasis added)). Thus, the existence of potentially superior alternatives does not negate the combination of teachings proposed by Petitioner. Accordingly, we are persuaded that Petitioner demonstrates sufficiently that a person of ordinary skill in the art would have had reason for combining the teachings of Kosuda and Maekawa to achieve the device recited in claim 14 of the ’941 patent.” slip op. at 29

  Patent outcomesUS 8,923,941 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,923,941
• Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · Oct 31, 2017 · IPR2017-00364 · APJ Jason J Chung · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 unpatentable because it did not establish a reasonable expectation of success combining the cited references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner confirms that Petitioner’s statements regarding the level of ordinary skill in the art are partially consistent with Patent Owner’s view, but, nonetheless, Patent Owner contends that an ordinarily skilled artisan would be the “ultimate generalist.” Ex. 2017 ¶¶ 16–17 (citing Ex. 2015, 84:13–20). We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 7

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

    “The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 4–5. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1, 21, and 25 by instead repeating that “modeling, simulation, and testing” leads to a reasonable expectation of success (Pet. 28); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner’s attempt at crafting a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Kenneth A. Zeger, Ph.D. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–169. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18

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

    “Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 121–134; Ex. 2017 ¶¶ 165–167. Instead, Petitioner simply asserts, in a conclusory manner, that “[b]ecause the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention” (emphasis added). Pet. 28 (citing Ex. 1002 ¶¶ 131–132). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Id. at 81:21–83:24, 84:13–24, 143:20– 144:3. Although Dr. Creusere opines that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite” slip op. at 17

  Patent outcomesUS 9,116,908 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00921 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–13 unpatentable as obvious over Reed and Nishida because it did not show a reason to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Initially, Patent Owner contends that Petitioner has failed to consider appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 12–13. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”). Patent Owner contends that the level of ordinary skill in the art is “low” (PO Resp. 13), but it is not clear whether Patent Owner further contends that Petitioner’s assessment is deficient because Petitioner fails to argue that a person possessing such a “low” level of ordinary skill in the art also would have “experience using knitting technologies to create knitted footwear uppers” (id. at 13–14) or whether the inclusion of such skill would raise the “low” level of skill in the art (id. at 14). Alternatively, Patent Owner may merely be contending that Petitioner’s declarant fails to qualify as a person of ordinary skill in the art. Id. at 14 (“If it was too ‘dangerous’ for Mr. Holden with his nearly forty years of experience, a person with just a “few years of experience” would not have had any knitting experience, let alone experience using knitting technologies to create uppers.”); see Tr. 62:17–22. Patent Owner is not required to help us assess the level of ordinary skill in the art and does not do so here. See PO Resp. 18 (“Petitioner may criticize NIKE for not submitting an expert declaration. But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden to prove patentability.”). In response to Patent Owner’s contentions, Petitioner argues that the level of ordinary skill in the art is not low and that hands-on knitting experience is not required. Reply 2–3. Petitioner further argues Patent Owner has not required knitting experience in its previous assessment with respect to a related patent of the level of ordinary skill in the art. Id. (citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and to the extent necessary, we again adopt Petitioner’s assessment of a person of ordinary skill in the relevant art. Inst. Dec. 8 n.3.” slip op. at 10

  • Expert testimonyPetitioner expert creditedMixed

    “document.” Reply 3 (quoting Ex. 2004, 12:7–11); see Ex. 2004, 12:12– 13:16. Declarants often have assistance in authoring their declarations. See Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47) (“the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”). Mr. Holden was not required to be the sole author of his declaration. Rather, the relevant issue regarding the preparation of Mr. Holden’s declaration is whether Mr. Holden adopted the content of his declaration as his own. Here, he has. See Ex. 1003 ¶¶ 3, 4, 209. As Patent Owner suggests, we weigh Mr. Holden’s declaration testimony in light of his testimony on cross-examination. Although Mr. Holden indicated that he was unable to define or was unfamiliar with certain terms during cross-examination, he did name references, including Spencer (Ex. 1010), that he could and would consult to obtain the answers to specific questions. Tr. 63:20–64:13. Moreover, Patent Owner’s counsel acknowledged that persons of ordinary skill in the art (or declarants) do not have to have all of the knowledge relevant to their testimony in their heads and that they are allowed to consult references, as appropriate. Id. at 63:20– 64:2. Although Patent Owner notes that Mr. Holden apparently was not aware of Spencer until this inter partes review (see Ex. 2004, 77:1–3; Tr. 64:1–6), his learning of and relying on a new reference alone is not sufficient reason to disregard, i.e., give no weight to, Mr. Holden’s testimony. Further, the issue here is not whether Mr. Holden is a person of ordinary skill in the art, but rather whether his testimony is of value to the panel. See Tr. 64:15– 18. Thus, as indicated in the discussion below, we determine the appropriate weight to give to Mr. Holden’s testimony.” slip op. at 31

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 29–31. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 29–30. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–14; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 17

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

    “i. Failure of Proof Petitioner bears the burden of proving by a preponderance of the evidence that the challenged claims are unpatentable. This includes demonstrating by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. As noted above, Petitioner argues that a person of ordinary skill in the art would have had at least three reasons to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. Pet. 12–14; see Tr. 10:12–11:12. First, Petitioner argues that, because Reed teaches that its methods are applicable to “all types of garments” (Ex. 1006, 5:56–57 (emphasis added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have had reason to apply the teachings of Reed to the processes and shoe parts of Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Second, Petitioner argues that, because both Reed and Nishida teach the advantages of reducing cost through the use of computer-controlled knitting machines, a person of ordinary skill in the art would have had reason to combine their teachings. Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Third, Petitioner argues that a person of ordinary skill in the art would have had reason to apply Reed’s methods for producing textile elements, from which to produce garments, to produce Nishida’s shoe upper patterns. Id. at 13–14; see KSR, 550 U.S. at 417. However, none of these reasons or any other reason identified by Petitioner addresses the differences between Reed and Nishida, specifically pre-seaming.” slip op. at 34

  Patent outcomesUS 7,814,598 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,814,598
• Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision

  Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyOther

    “of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14

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

    “Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17

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

    “4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21

  Patent outcomesUS 8,873,500 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Qualcomm IncorporatedSome claims unpatentable
  PTAB · Aug 23, 2017 · IPR2016-00620 · APJ James B Arpin · IPR · Final written decision

  Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “F. Assessment of Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the relevant art “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art.” slip op. at 14

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

    “1. “hopping sequence” (Claims 1, 14, 16, and 29 and others) In the institution decisions, we determined that, in light of the Specification of the ’500 patent, the broadest reasonable interpretation of the phrase “hopping sequence” is “the order in which the communications network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11 (citing 620 Pet. 11–12). Patent Owner does not contest this construction. PO Resp. 6–7. For the reasons set forth in the Decision on Institution in Case IPR2016-00620, we remain persuaded that Petitioner’s proposed construction is the broadest reasonable interpretation of the phrase “hopping sequence.”” slip op. at 15

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

    “Petitioner also provides a persuasive rationale for combining the teachings of Dabak and Kockmann. Id. at 39–40. Petitioner asserts that they are both references directed to the same problem, namely, “to communication performance improvements through adapted frequency hopping to avoid channels disturbed by interference.” Id. at 40 (citing Dabak, Abstract; Kockmann, 2:49–3:20; 620 Ex. 1002 ¶ 113). In addition, according to Petitioner, a person of ordinary skill in the art would have had reason to modify the teachings of Dabak regarding the MSD technique in view of the teachings of Kockmann “to utilize multiple channels to communicate with the slave device over the subset of communication channels according to an adapted hopping sequence” in order to accomplish the shared goals of these references. Id. at 40 (citing 620 Ex. 1002 ¶ 113); see In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). According to Petitioner, the combination of these teachings “is a simple use of known teachings to yield predictable results.” Id. (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)). Based on our review of Petitioner’s arguments and evidence, we find that Petitioner demonstrates that combined teachings of Dabak and Kockmann teach or suggest all of the limitations of independent claims 1 and 16 and find that a person of ordinary skill in the art would have had reason to combine the teachings of Dabak and Kockmann to achieve the methods of claim 1 and the devices of claim 16. See 620 Pet. 17–20, 33–35, 38–40, 48–49. We conclude that Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combined teachings of Dabak and Kockmann. Moreover, because Petitioner’s arguments for the obviousness of independent claim 16 over Dabak and Kockmann rely on the arguments and evidence presented with respect to independent claim 1, we also conclude that Petitioner has shown by a preponderance of the evidence that independent claim 16 would have been obvious over the combined teachings of Dabak and Kockmann, as well as on its related challenges to dependent claims 2, 3, 5, 8, 9, 12, 14, 15, 17, 18, 20, 23, 24, 27, and 29–31. See 620 Pet. 25–26, 40 (claim 2; citing Dabak, 7:57–60, 8:1–2, Fig. 1; 620 Ex. 1002 ¶ 51, 52), 26–27, 40 (claim 3; citing Dabak, 2:39–40, 3:1–5, 3:50–54, 3:60–62; 620 Ex. 1002 ¶¶ 54, 55), 27–28, 42 (claim 5; citing Dabak, 7:57–67; 620 Ex. 1002 ¶ 57), 28, 44 (claim 8; citing Dabak, 2:58–59; 620 Ex. 1002 ¶ 59), 44–47 (claim 9; citing Kockmann, 7:44–47, 8:39–48; 620 Ex. 1002 ¶¶ 136, 137), 31, 47 (claim 12; citing Dabak, Fig. 3B; 620 Ex. 1002 ¶ 65), 31–32, 47 (claim 14; citing 620 Ex. 1002 ¶¶ 69–75, 152), 32–33, 48 (claim 15; citing Dabak, 3:1–5, 7:57–” slip op. at 31

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

    “Patent Owner contends, however, that the combined teachings of Dabak and Kockmann fail to teach or suggest all of the limitations of claim 4. In particular, Patent Owner contends that, “[a]s described in Kockmann, ‘disturbed’ does not in fact mean ‘occupied,’ but rather it only means that ‘[a] disturbed carrier frequency is thus a carrier frequency onto which a signal is modulated that exceeds a specific threshold.’” PO Resp. 14 (citing Kockmann, 6:43–49). Patent Owner contends that determining whether a channel is “occupied” “requires analysis beyond the measurements called for by Kockmann (i.e.[,] determining more than just the mere presence of a modulated signal ‘that exceeds a specific threshold,’ but rather whether its source was FH or NFH).” Id. at 15; see 620 Ex. 2001 ¶¶ 33–37. Initially, Petitioner again states that Kockmann discloses that “[d]isturbance thereby means that either a disturbance in the actual sense or an occupancy by some other transmitter is present.” Kockmann, 6:41–43 (emphasis added). Patent Owner contends, however, “that a channel ‘occupied’ by an NFH system and a channel ‘disturbed’ by another transmitter are somehow different because an occupancy determination requires additional ‘analysis.’” Reply 10. Nevertheless, we agree with Petitioner that Patent Owner does not show where the claims recite one type of analysis or prohibit another. Id. Thus, we find that the combined teachings of Dabak and Kockmann teach or suggest all of the limitations of claim 4. Petitioner’s arguments with respect to claim 4 apply equally to claim 19. Based on our review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of the evidence that claims 4 and 19 would have been obvious over the combined teachings of Dabak and Kockmann.” slip op. at 34

  Patent outcomesUS 8,873,500 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Apple Inc. / HTC Corp. et al. v. Parthenon Unified Memory Architecture LLCAll claims unpatentable
  PTAB · Aug 4, 2017 · IPR2016-00923 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 3, 5, 11, and 13 are unpatentable as anticipated by Lambrecht; claims 4 and 6 are unpatentable as obvious over Lambrecht with Artieri and Moore, respectively.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The words of a claim generally are given their ordinary and customary meaning, and that is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1312–13. Claims are not interpreted in a vacuum, but are a part of, and are read in light of, the specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Although it is improper to read a limitation from the specification into the claims, the claims still must be read in view of the specification of which they are a part. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004). slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the knowledge level of a person of ordinary skill in the art. Relying on the testimony of its declarant, Dr. Stone, Petitioners assert that a person of ordinary skill in the art at the time of the invention of the ’789 patent would be an individual who possesses (1) an accredited Bachelor’s degree in electrical engineering, computer science, or computer engineering; and (2) at least three years of experience in the fields of data compression and overall computer system architecture. Pet. 10 (citing Ex. 1030 ¶¶ 74–77). Patent Owner’s declarant, Dr. Thornton, testifies that a person of ordinary skill in the art at the time of the invention of the ’789 patent would be an individual who possesses (1) an accredited Bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree; and (2) at least two to three years of experience in signal/image processing and computer architecture at both the systems and micro-architecture levels. Ex. 2003 ¶ 27. In lieu of the two to three years of experience, Dr. Thornton testifies that a person of ordinary skill in the art at the time of the invention of the ’789 patent may hold a Master’s or other graduate degree in electrical or computer engineering with a focus in computer architecture and signal/image processing, along with one year of relevant experience. Id. Putting aside the subtle distinctions in the assessments of the level of skill in the art put forth by both declarants, Dr. Thornton testifies that, if he were to apply Dr. Stone’s assessment of the level of skill in the art, his “analysis and conclusions would remain unchanged.” Ex. 2003 ¶ 28. Because Dr. Stone’s assessment of the level of skill in the art is consistent with the ’789 patent and the asserted prior art, we adopt it and apply it to our evaluation below, but note that our conclusions would remain the same under Dr. Thornton’s assessment.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Lambrecht together with the knowledge of one of ordinary skill in the art, we agree with Petitioners that, when Lambrecht’s PCI bus 120 is placed in multimedia mode, it allows real time, multimedia data transfers between multimedia device 144D (which Petitioners identify as the decoder (Pet. 15)) and main memory 110. See Pet. 13–14, 17–19; Pet. Reply 3–7. Lambrecht discloses that “multimedia devices 142D–146D communicate with each other and with CPU 102 and main memory 110 via the PCI bus 120, as is well known in the art.” Ex. 1032, 27:57–59. Lambrecht further discloses that “multimedia devices 142D–146D also communicate data between using the PCI bus signal lines 120 when the PCI bus 120 is in the multimedia mode.” Id. at 27:59–62; see also id. at Fig. 21 (illustrating how PCI bus 120 is coupled to multimedia devices 142D–146D and PCI bridge chipset 106, which, in turn, interfaces with main memory 110). Based on these disclosures, one of ordinary skill in the art would have understood that, in Figure 21 of Lambrecht, multimedia devices 142D–146D have access to main memory 110 in multimedia mode because Lambrecht discloses that multimedia devices 142D–146D communicate both with each other and main memory 110 via PCI bus 120, and also communicate data using the same PCI bus signal lines 120 when PCI bus 120 is in multimedia mode. See Ex. 1030 ¶ 78 (addressing the limitations recited in independent claim 1). In addition, upon considering these cited disclosures in Lambrecht, Petitioners’ declarant, Dr. Stone, testifies that one of ordinary skill in the art would have understood that, when PCI bus 120 in Figure 21 is placed in multimedia mode, it “provides for real-time[,] multimedia data transfers.” Ex. 1044 ¶ 4. We credit Dr. Stone’s testimony in this regard because it is consistent with Lambrecht’s description of Figure 21. See id. (citing Ex. 1032, 26:53–56, 27:57–62). Moreover, there is nothing in reference to Figure 21 and its corresponding description suggesting that, when PCI bus 120 is placed in multimedia mode, multimedia device 144D is precluded from accessing main memory 110 and operating in real time.” slip op. at 20

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

  Patent outcomesUS 5,812,789 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,812,789
• Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing granted
  PTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8

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

    “a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21

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

    “be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9

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

    “1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,079,086
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.All claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00323 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 2, 8, and 9 are unpatentable as obvious over Chen and Harari because the combined teachings meet the claim limitations and provide a reason to combine.

  RulingsFinal written decision

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

    “We agree with Petitioner that Patent Owner improperly seeks to narrow the construction of this term. There is no contention by either party that the Specification of the ’953 patent defines or limits the plain and ordinary meaning of “configures.” In addition, our own review of the Specification has failed to locate any definition of the term or disclaimer of the term’s scope. The only support that Patent Owner cites for its definition is Dr. Madisetti’s testimony. See PO Resp. 29 (citing Ex. 2001 ¶ 104). But the only support cited by Dr. Madisetti is the IEEE Dictionary. See Ex. 2001 ¶ 104 (citing Ex. 2004, 11). The IEEE Dictionary definition offered by Patent Owner defines the term as “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11. Petitioner accepts this definition as the plain and ordinary meaning. Pet. Reply 19. However, this definition does not contain support for Patent Owner’s additional requirement “that functionality thereafter becomes available/unavailable for use when it is setup to allow/disallow it.” Without additional support from the intrinsic evidence, we decline to read in additional limitations into the plain and ordinary meaning for this term as evidenced by the dictionary definition. On the contrary, we find that this dictionary definition is consistent with the use of that term in Specification, which use “configure” in the plain and ordinary sense of the term. See, e.g., Ex. 1001, 28:12–29:55 (discussing various embodiments where there are different options for “configuring” the memory). Thus, we determine that the broadest reasonable interpretation of “configures” consistent with the Specification is “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11 (definition of “configure”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that Patent Owner improperly seeks to narrow the construction of this term. There is no contention by either party that the Specification of the ’953 patent defines or limits the plain and ordinary meaning of “configures.” In addition, our own review of the Specification has failed to locate any definition of the term or disclaimer of the term’s scope. The only support that Patent Owner cites for its definition is Dr. Madisetti’s testimony. See PO Resp. 29 (citing Ex. 2001 ¶ 104). But the only support cited by Dr. Madisetti is the IEEE Dictionary. See Ex. 2001 ¶ 104 (citing Ex. 2004, 11). The IEEE Dictionary definition offered by Patent Owner defines the term as “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11. Petitioner accepts this definition as the plain and ordinary meaning. Pet. Reply 19. However, this definition does not contain support for Patent Owner’s additional requirement “that functionality thereafter becomes available/unavailable for use when it is setup to allow/disallow it.” Without additional support from the intrinsic evidence, we decline to read in additional limitations into the plain and ordinary meaning for this term as evidenced by the dictionary definition. On the contrary, we find that this dictionary definition is consistent with the use of that term in Specification, which use “configure” in the plain and ordinary sense of the term. See, e.g., Ex. 1001, 28:12–29:55 (discussing various embodiments where there are different options for “configuring” the memory). Thus, we determine that the broadest reasonable interpretation of “configures” consistent with the Specification is “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11 (definition of “configure”).” slip op. at 8

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

    “specific ISPP process. As Petitioner explains and Patent Owner concedes, there is no express definition or disclaimer of “programming” in the Specification. Pet. Reply 4–7; Tr. 24:1–15. Instead, Patent Owner’s argument is based on its contention that the Specification only describes ISPP, and, therefore, must be limited to that programming process. See Tr. 20:9–28:14. We do not agree. The mere fact that the Specification describes only one programming process embodiment is insufficient to limit the claims to that process. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[W]e have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”); see also Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.”); Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“[T]his court has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”). Indeed, “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’” Liebel–Flarsheim, 358 F.3d at 906 (quoting Teleflex Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). Here, Patent Owner has not identified any such words or expressions of manifest exclusion or restriction. On the contrary, the language of the Specification is clear that the process described is not intended to be limiting. See Ex. 1001, 4:29–30 (describing Figure 23 as “a flow chart describing one embodiment of a programming process”), 4:5–6 (describing Figure 11 as “a flow chart describing one embodiment of a process for programming non-volatile memory”), 16:39–40 (“FIG. 11 is a flow chart describing one embodiment of a method for programming non-volatile memory.”), 25:31–33 (“FIG. 23 is a flowchart describing one embodiment of a process for programming according to the graphs of FIGS. 21 and 22.”). Thus, we decline to limit “compensation during programming” to only the ISPP programming process.” slip op. at 10

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

    “In the proposed combination, the combined managing circuit teaching includes Harari’s adaptive error correction approach in Chen’s floating gate compensation technique. See Pet. 45–46. As the Petition explains, the advanced error correction scheme is enabled dynamically during either reading or programming to minimize impacts to the performance of the flash EEPROM without compromising reliability. Id. at 46. As Dr. Subramanian testifies, when the managing circuit teaching of Chen is modified in light of Harari, the storage device of Chen is initialized to operate using a similar adaptive error correction approach. Ex. 1010 ¶¶ 35, 36. Under this approach, the modified managing circuit teaching of Chen would use error correction techniques to detect floating-gate coupling errors in Chen’s storage system, and then selectively enable floating-gate coupling compensation either during reading or programming, but only when an error is detected. Id. Thus, the managing circuit would configure the memory system to either perform compensation during reading or during programming depending on the type of error encountered. Id. This type of setup is consistent with the configuring described in the Specification, where the managing circuit is configured at manufacture to operate a particular way. See Ex. 1001, 28:30–38. As Dr. Subramanian persuasively testifies the combined system would obtain the benefit of enhanced reliability of the compensation techniques of Chen, while reducing the performance impact associated with those techniques. Ex. 1010 ¶ 36. As Dr. Subramanian explains, this combined managing circuit initializes the storage device, so that it operates in a particular way. Id. Dr. Subramanian testifies that, depending on the type of error detected, Harari makes a particular type of error correction available and makes the other type of error correction unavailable. Id. ¶ 40. As a result, the managing circuit of Harari initializes the functionality of the memory device, so that the advanced error correction functionality thereafter becomes available or unavailable for use. Id. We find Dr. Subramanian’s testimony to be consistent with the references’ teachings and consistent with the construction we have adopted. Thus, we give Dr. Subramanian’s testimony substantial weight. Dr. Madisetti’s testimony, on the other hand, relies on the inappropriately narrow construction we rejected above. Thus, we determine that Dr. Madisetti’s testimony is entitled to less weight. In light of this determination and weighing the testimony and evidence presented by the parties, we find that Petitioner has shown that the combination of the teachings of Chen and Harari accounts for the “managing circuit” that “configures.”” slip op. at 18

  Patent outcomesUS 7,495,953 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,495,953

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