- PTAB · Jan 10, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Final written decision
The Board found claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 not shown unpatentable: Bensimon did not disclose the claimed restricted-access mode, and Takahashi did not cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner states––and Patent Owner does not dispute––that “a person having ordinary skill in the art of secure computer data storage devices (i.e. in the art for the ’459 patent) would have had (i) a B.S. degree in electrical engineering, computer engineering, computer science, or equivalent training, and (ii) approximately two years of experience in the design or research of secure computer data storage devices.” Pet. 4 (citing Ex. 1002 ¶ 32). We agree with Petitioner’s statement of the level skill of an ordinary artisan at the time and adopt it as our own. Although Patent Owner does not directly address an ordinary artisan’s level of skill, Petitioner’s description of the level of skill accords with that of Patent Owner’s witness Dr. Goldschlag. Compare id., with Ex. 2004 ¶ 21 (opining that “one of ordinary skill in the art would have had a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or equivalent training, as well as two to three years of technical experience in the field of computer security and storage devices.”). We further find the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau,” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“within an electronic circuit embedded within the storage device.” Ex. 1001, 9:58–59, 10:34–35. Although these claims are not at issue in this case, they evince the patentee’s desire to employ each of the terms “unique” and “specific” where each is intended. It is well established that ordinarily different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings. . . .”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Further, the Specification describes that, depending on the selected security level, a cryptographic key can be generated using in part “device-specific security information derived from the unique format information of the removable storage device.” Ex. 1001, 3:66–4:1. The Specification thus describes the format information of the removable storage device as “unique” but describes the security information of the device merely as “specific,” not “unique.” Finally, the Specification discloses “for exemplary purposes only” an embodiment wherein “a unique, device-specific security information can be generated from the unique characteristics of the underlying storage medium.” Id. at 7:43–47 (emphasis added). The Specification thus describes device-specific security information as unique in a particular, non-limiting example and explicitly indicates that the device-specific security information derived in that example is “unique.” See id. In light of the foregoing description, we disagree with Patent Owner’s arguments that “specific” in the context of the claim term “device-specific security information” means unique. Construing “specific” to mean “unique” as Patent Owner urges would render meaningless the subsequent use of “unique” in claims 9 and 17, without a clear indication in the Specification of such an intent. See In re Paulsen, 30 F.3d at 1480. Instead, we accord the word “specific” its ordinary and customary meaning and construe “device-specific security information” as meaning “information particular to, but not necessarily unique to, a storage device and used to secure access to the storage device.” Although we construe the disputed term “device-specific security information,” our determination that Petitioner has failed to show by a preponderance of the evidence that any of the Instituted Claims are unpatentable is not dependent upon our construction, as detailed below.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner has not identified in Bensimon explicit or inherent disclosure of the claimed restricted-access mode. Claim 1 requires operating in restrictedaccess mode “when the storage device does not have the device-specific security information.” Ex. 1001, 9:24–26. Petitioner identifies Bensimon’s read/write password, either alone or in combination with the password-enabling flag, as meeting the claimed device-specific security information. Reply 13; Pet. 22. Thus, in order to meet the requirements of claim 1, Petitioner is required to show that Bensimon discloses operating in restricted-access mode when the storage device does not have the read/write password, or alternatively does not have the combination of the read/write password and password-enabling flag. See, e.g., In re Bond, 910 F.2d at 832 (Fed. Cir. 1990) (holding that in order to show anticipation, claimed elements must be arranged as required by the claim). Petitioner does not make the required showing. As Petitioner argues: “these claims recite operating in one mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is present, and operating in another mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is not present.” Reply 16. Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device. See id. at 16–22. Rather, Bensimon describes two different possible modes of operation when the read/write password is absent from the storage device, namely either no protection or write protection. Ex. 1004, 5:33–39, 6:3–4, 6:13–29. Contrary to the claim language, operation in Bensimon’s write protection mode depends upon the presence of the write protection password, not upon the absence of the read/write password and password-enabling flag (i.e. the claimed device-specific security information). Ex. 1004, 6:13–23; see also Reply 16 (citing Ex. 1012 ¶ 18) (asserting the claimed restricted-access mode is met “when Bensimon’s storage device 100 only has the write-protection (read-only) password”). This disclosure is insufficient to establish anticipation because claim 1 requires operating in restricted access mode when the storage device does not have the device-specific storage information, which Petitioner asserts is the read/write password and password-enabling flag. “A claim is anticipated only if each and every element as set forth in the claims is found.” Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). We similarly are not persuaded that Bensimon inherently anticipates claim 1. “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). Here, the cited disclosure identifies two possible modes of operation when the read/write password and password-enabling flag are absent from Bensimon’s storage device, neither of which necessarily must occur.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“E. Obviousness of Claims 2 and 34 based on Bensimon in combination with Takahashi Petitioner asserts dependent claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. Pet. 36–40 (analysis of claim 2) and 42–43 (analysis of claim 34). Petitioner’s analysis of these claims does not repair the deficiencies described above with regard to the claimed restrictedaccess mode. See id.; see also Reply 25. Accordingly, for the reasons discussed above in the context of claim 1 and based on the full trial record, we determine that Petitioner has failed to show by a preponderance of the evidence that claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. See supra Section III.D.2.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,968,459 - PTAB · Sep 17, 2015 · IPR2015-00531 · APJ Patrick M Boucher · IPR · Order
The Board terminated the proceedings as to MediaTek Inc. and MediaTek USA, Inc., vacated the scheduling orders, and continued the proceedings as to Bandspeed, Inc.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of the related proceedings, a petition was filed by Qualcomm Incorporated on July 12, 2015, with a motion to join a respective one of these proceedings. Papers 1, 2 in each of the related proceedings. We note that the joinder motions in the related proceedings were filed before the instant motions to terminate were filed in these proceedings. Patent Owner opposes the joinder motions in the related proceedings. Paper 8 in each of the related proceedings. If the joinder motions are not granted, the related proceedings are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner has not yet filed a preliminary response in any of the related proceedings, the deadline for which is October 28, 2015, nor sought to expedite the related proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus 2 Citations are to IPR2015-00314. premature to decide the joinder motions in the related proceedings. See 35 U.S.C. § 315(c). Nevertheless, we discern no compelling interest to be served by delaying termination of these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc., both of which have settled with Patent Owner. See 35 U.S.C. § 317 (“An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner unless the Office has decided the merits of the proceeding before the request for termination is filed” (emphasis added)). These proceedings are at an early stage, and no motions are pending in any of these proceedings. Under these circumstances, we determine that it is appropriate to terminate these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these proceedings with respect to Patent Owner. Because no petitioner remains in these proceedings, we vacate the Scheduling Order in each proceeding (Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for these proceedings after decisions on the joinder motions are made in the related proceedings. If appropriate, we will also revisit the Motions to Terminate as to Patent Owner after ruling on the motions for joinder in the related proceedings.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The Joint Motions to Seal are granted to the extent that they request that the agreement be treated as business confidential information and be kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise denied. The requests should not have been filed as “Motions to Seal,” which has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying document in the context of the proceeding, e.g., expungement or made public under certain circumstances.” slip op. at 3
NonePatents in suitUS 8,542,643 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 18, 2014 · IPR2014-00841 · APJ Justin T Arbes · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute inter partes review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On August 14, 2014, the parties filed a joint motion (Paper 10) to terminate the instant proceeding on the basis of a settlement reached by the parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a copy of their written settlement agreement (Exhibit 1012) and requested in the joint motion that the settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The instant proceeding is still in the preliminary stages. Patent Owner has not yet filed a preliminary response and we have not yet determined whether to institute an inter partes review. The parties further represent that they have agreed to dismissal with prejudice of the pending district court case between the parties involving U.S. Patent No. 7,729,530 B2 (“the ’530 patent”). See Paper 10 at 2 (citing Ex. 1012). Although the parties identify a number of other pending district court cases where the ’530 patent is being asserted against other defendants, see Paper 4 at 2–3; Paper 8 at 1–2, given the status of this proceeding and the parties’ agreement, we determine that it is appropriate to terminate the proceeding without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,729,530 - PTAB · Jun 26, 2014 · IPR2014-00560 · APJ Hyun J Jung · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00560 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties stated in their joint motion that they have settled their dispute and have reached agreement to terminate this inter partes review. Paper 10, 2. Patent Owner has not yet filed a preliminary response or a waiver under 37 C.F.R. § 42.107. We are persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and” slip op. at 2
NonePatents in suitUS 5,592,555 - PTAB · Jun 20, 2014 · IPR2014-00140 · APJ Sally C Medley · IPR · Order
The Board terminated IPR2014-00140 because an ex parte reexamination certificate had cancelled all challenged claims 1–14.
RulingsOther- Adverse judgmentAdverse judgmentOther
“The ultimate purpose of a trial is to determine if the challenged claims are unpatentable, and if the claims are determined to be unpatentable, to cancel the unpatentable claims. 35 U.S.C. § 318. The involved claims in this proceeding, however, have been cancelled through another proceeding. There is, therefore, no occasion to continue the trial. Based on the facts of this case, termination is appropriate. Accordingly, it is ORDERED that the proceeding is terminated.” slip op. at 2
NonePatents in suitUS 7,822,816 - PTAB · May 2, 2014 · IPR2014-00229 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In the motions to terminate, the parties state that they have settled their dispute with respect to the patents involved in the proceedings, and have reached agreement to terminate these proceedings. Paper 9, 1. Furthermore, the joint motion indicates that the parties have agreed to dismiss Petitioner and other real parties-in-interest identified by 2 IPR2014-00229, Paper 9; IPR2014-00230, Paper 10, IPR2014-00231, Paper 9. 3 IPR2014-00229, Ex. 1047; IPR2014-00230, Ex. 1047, IPR2014-00231, Ex. 1047. 4 IPR2014-00229, Paper 10; IPR2014-00230, Paper 11, IPR2014-00231, Paper 10. 5 IPR2014-00229, Paper 7; IPR2014-00230, Paper 8; IPR2014-00231, Paper 7.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,131,121 - PTAB · May 2, 2014 · IPR2014-00230 · APJ Stacey G White · IPR · Order
The Board granted the joint motions to terminate the proceedings as to all parties and granted the requests to keep the settlement agreement confidential.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,108,704 - PTAB · May 2, 2014 · IPR2014-00231 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; FURTHER ORDERED that the parties’ joint requests that the settlement agreement (Ex. 1047) be treated as business confidential information, kept separate from the file of the involved patents, and made available only to Federal 6 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Government agencies on written request, or to any person on a showing of good cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.” slip op. at 3
NonePatents in suitUS 6,009,469
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.