- Juniper Networks, Inc. v. Monarch Networking Solutions LLCAdverse judgmentPTAB · Apr 1, 2025 · IPR2024-00565 · APJ Brian J Mcnamara · IPR · Adverse judgment
The Board granted Patent Owner’s unopposed motion for adverse judgment after claims 1 and 5-8 were cancelled in reexamination, and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“When all claims at issue in an IPR are cancelled in a concurrent reexamination, the Board “construe[s] [the] cancellation of all claims . . . as a request for adverse judgment.” Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2-3 (PTAB Apr. 14, 2016). ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion for Adverse Judgment is GRANTED; FURTHER ORDERED that Adverse Judgment is entered; and FURTHER ORDERED that this inter partes review is terminated.” slip op. at 2
NonePatents in suitUS 8,451,845 - PTAB · May 21, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1, 3–8, 14, 15, and 18 on all petitioned grounds and granted ecobee’s motion to join the Copeland IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Copeland IPR. Copeland IPR, Paper 12, 2 (PTAB Oct. 2, 2023). Petitioner challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Copeland IPR. Mot. 1 (The Petition and” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Practice Guide (“CTPG”) for evaluating a joinder motion.8 CTPG 76 (citing Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15, 4 (PTAB April 24, 2013)) and contends the factors weigh in favor of exercising our discretion to join Petitioner as a party to the Copeland IPR. Mot. 4. In evaluating the Motion, we consider the reasons why joinder may be appropriate, whether the Petition presents any new grounds of patentability, the impact, if any, joinder would have on the trial schedule in the Copeland IPR, and how briefing and discovery may be simplified. CTPG 76.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“For this factor, our concerns are the “inefficiency” of addressing “substantially identical prior art arguments that were at issue in the district court” and the resulting “possibility of conflicting decisions.” Fintiv, IPR2020-00019, Paper 11, 12. The Director’s Fintiv Memo is in accord with these concerns. Fintiv Memo at 7 (“[T]he PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”). Because there is no possibility of our Final Written Decision in the joined proceeding conflicting with the judgment of the district court, and there will be little, if any, inefficiency or burden on the Board in proceeding with joinder, we find that this factor weighs heavily against exercising our discretion to deny institution/joinder.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Patent Owner admits that Petitioner has not previously filed a petition for inter partes review of the ’887 patent. Opp. 12. Under Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB April 2, 2019) (precedential), General Plastic may apply when parties that have a “significant relationship” file successive petitions against the same patent. Valve Corp., Paper 11 at 10. In Valve, the successive petitioners were found to have a significant relationship because they were “co-defendants in the District Court litigation and were accused of infringing” the patent being challenged before the Board. Id. Patent Owner admits it “is not aware of a close relationship between Petitioner and Copeland Comfort Control LP.” Prelim. Sur-reply 4. In fact, Copeland and Petitioner are not co-defendants. Consequently, there is no “significant relationship” between Petitioner and Copeland. Patent Owner argues that General Plastic Factors 2, 4, and 6 weigh against joinder. Opp. 14. The Director, however, recently determined that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors” and that “exercising discretion to deny the Petition is not justified.” Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, Paper 12, 6–7 (PTAB April 19, 2024) (Decision Granting Director Review). Regardless of whether the other factors weigh against joinder or not, factor one “necessarily outweighs” the other factors. Consequently, we do not exercise discretion to deny institution or joinder in this case based on General Plastic.” slip op. at 17
Discretionary denialPatents in suitUS 7,746,887 - Keysight Technologies, Inc. v. Centripetal Networks, Inc.Some claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01097 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–3, 5–13, and 15–20 are unpatentable as obvious; claims 4 and 14 were not shown unpatentable because Sourcefire did not disclose the claimed responsive updating of an existing packet flow log entry.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address this issue, and neither side argues that it might affect the patentability analysis or otherwise change the outcome. Thus, as 2 Sourcefire 3D System User Guide, Ver. 4.10, Mar. 16, 2011 (Ex. 1004). 3 U.S. Patent App. Pub. No. 2015/0207809 A1 (Ex. 1029). we did at institution, we apply Petitioner’s description of an ordinarily skilled artisan, as we find it consistent with the ’917 patent and the asserted prior art. B.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. Threat Identifier and Threat Indicator Patent Owner identifies two terms that were construed in the ITC investigation involving the ’917 patent based on constructions agreed upon by the parties. PO Resp. 9. First, the parties in the ITC investigation agreed that “threat identifier” means “information that identifies one or more network threats.” Id. at 11 (citing Ex. 2004, 3). Second, the parties further agreed that “threat indicator” means “information that indicates a resource associated with a network threat,” “[f]or example, network addresses, ports, FQDNs, URLs, URIs, the type of threat, geographic information, anonymous proxies, actors, or the like.” Id. at 11–12 (citing Ex. 2004, 3). Patent Owner asserts that these constructions should be used in this proceeding. Id. at 12. Petitioner does not dispute these constructions, and we adopt them.4” slip op. at 12
- ExcludeMotion to exclude, grantedGranted
“Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14
- Expert testimonyDecided for petitioner
“Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14
Patent outcomesUS 10,193,917 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,193,917 - PTAB · May 3, 2023 · IPR2023-00188 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on the petition’s challenges to claims 1–3, 11, 12, 16, 18, and 20, and granted Garmin’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Apple IPR met the “reasonable likelihood” standard of § 314(a). IPR2022-01137, Paper 11, 2, 30. There is no dispute that the Petition presents the same patentability challenges as those for which a trial was instituted in the Apple IPR. See Mot. 5 (asserting that the Petition “is substantively identical to the petition in the Apple IPR”); see Pet. 21–87. Specifically, the Petition “challeng[es] the same claims of the same patent, relying on the same expert declaration, and on the same grounds and combinations of prior art submitted in the Apple petition.” Id. In the present proceeding, Patent Owner does not dispute the patentability merits of Petitioner’s challenges. We conclude that Petitioner has demonstrated a reasonable likelihood” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). Petitioner filed the Motion on November 10, 2002, before institution of the Apple IPR. See 37 C.F.R. § 42.122(b). Petitioner asserts that the Motion should be granted because the Apple IPR will not be impacted if Petitioner were to join that proceeding. Mot. 1, 5–6. Petitioner also agrees to take an “understudy” role in the Apple IPR. Id. at 6–8. Specifically, Petitioner agrees that, as long as Apple remains an active party, (1) Petitioner’s filings “will be consolidated with the filings of the current petitioner”; (2) Petitioner “shall not be permitted to raise any new grounds . . . or introduce any argument or discovery not already introduced”; (3) Petitioner “shall be bound by any agreement between Patent Owner and the current petitioner concerning discovery and/or depositions”; and (4) Petitioner “shall not receive any direct, cross examination, or redirect time” at deposition beyond that permitted by rule or agreement. Id. Patent Owner does not oppose the Motion. Because Petitioner will take an understudy role that will not impact the Apple IPR previously instituted on substantially identical grounds—and in the absence of opposition by Patent Owner—we determine that it is appropriate under these circumstances to join Petitioner as a party to the Apple IPR.” slip op. at 8
NonePatents in suitUS 8,581,706 - PTAB · Jan 4, 2023 · IPR2022-01199 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 24, and 25 for all petition grounds and granted Keysight’s motion to join the PAN IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. CONCLUSION As discussed above, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 18–53, with PAN Pet. 18–50; see Prelim. Resp. 37, 41; supra § III.B.1; infra §§ III.C.6(c), III.D.3. Based on the current record, and for the reasons discussed above, Patent Owner’s arguments that the Petition fails to satisfy the “reasonable likelihood” standard for instituting trial lack merit. See supra §§ III.B.2–III.B.5. Hence, we determine that the Petition “warrants the institution of an inter partes review under section 314.” See 35 U.S.C. § 315(c).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 97; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 101, 120. Hence, we disagree with Patent Owner that session traffic associated with a whitelisted destination domain is “simply forwarded to its destination without . . . filtering.” See Prelim. Resp. 20. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 97–98, 101, 104, 115, 125, 134, 1144; Prelim. Resp. 19. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 101, 120, 142. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 116, 141–142. Buruganahalli identifies the following advantage due to filtering packets with encrypted data based on a hostname extracted from a hello message: “the rest of the stream” containing packets with encrypted data “can be forwarded without any decryption resulting in less state to track thereby enhancing performance.” Ex. 1004, 5:43–51; see Ex. 1003 ¶ 120.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree that factor (1) favors discretionary denial. When considering parallel litigation in light of Fintiv, the Board seeks to, among other things, minimize “inefficiency and duplication of efforts” when another tribunal may resolve “the same or substantially the same issues.” Fintiv, IPR2020-00019, Paper 11 at 5 n.7, 6, 14; see Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 11 (PTAB Jan. 9, 2020). A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Fintiv, IPR2020-00019, Paper 11 at 6. In the circumstances here, there are few, if any, “concerns about inefficiency and duplication of efforts.” In the 2017 Keysight case, neither the district court nor the jury determined the validity/invalidity of any claim in the ’856 patent over any prior art since the case settled before jury deliberations began. See Ex. 3004, 34; Prelim. Resp. 15; Opp. 3 n.1. Hence, factor (1) does not favor discretionary denial. (b)” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Factor (1): Previous Petition For factor (1), Petitioner did not previously file a petition requesting an inter partes review of any claim in the ’856 patent. We recognize, however, that General Plastic has not been limited to proceedings where the same petitioner files multiple, staggered petitions and that “when different petitioners challenge the same patent,” we should consider “any relationship between those petitioners when weighing the General Plastic factors.” See, e.g., Valve, IPR2019-00062, Paper 11 at 9. In Valve, the Board noted that the petitioner Valve and a previous petitioner HTC “were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, IPR2019-00062, Paper 11 at 1, 10. Based on those particular facts, the Board determined that there was a “significant relationship” between Valve and HTC “with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Here, in contrast to Valve, nothing in the current record indicates that there is a “significant relationship” between Petitioner and PAN “with respect to Patent Owner’s assertion of” the ’856 patent. That Petitioner copied PAN’s petition to present substantively identical challenges to claims 1, 24, and 25 in the ’856 patent does not create a “significant relationship” between Petitioner and PAN. Copying a previously instituted petition is “common in the joinder context” and “an accepted approach” because it is an efficient way to satisfy § 315(c)’s requirement to file a petition that “warrants the institution of an inter partes review.” Expedia, Inc. v. Express Mobile, Inc., IPR2022-00785, Paper 16 at 7–9 (PTAB Sept. 27, 2022). For these reasons, factor (1) does not favor discretionary denial.” slip op. at 50
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,917,856 - PTAB · Jan 4, 2023 · IPR2022-01151 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 24, and 25 on all petition grounds and granted Cisco’s motion to join the PAN IPR, subject to stated conditions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“we decline Patent Owner’s invitation to depart from the “reasonable likelihood” standard for instituting trial. 7. CONCLUSION As discussed above, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 34–67, with PAN Pet. 18–50; see Prelim. Resp. 34, 37; supra § III.B.1; infra §§ III.C.5(c), III.D.3. Based on the current record, and for the reasons discussed above, Patent Owner’s arguments that the Petition fails to satisfy the “reasonable likelihood” standard for instituting trial lack merit. See supra §§ III.B.2–III.B.5. Hence, we determine that the Petition “warrants the institution of an inter partes review under section 314.” See 35 U.S.C. § 315(c).” slip op. at 36
- Other 314aInstitution denied discretionary otherDenied
“For these reasons, Patent Owner’s arguments about harassment and gamesmanship do not warrant the exercise of discretion to deny institution.” slip op. at 42
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner stipulates as follows: If the Board institutes trial, Petitioner will not pursue, in any further proceedings at the district court, the specific grounds asserted in the inter partes review, or on any other ground that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications). Pet. 22 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Because Petitioner provides a Sotera stipulation, we decline to exercise our discretion under § 314(a) to deny institution based on the Cisco case. See Interim Procedure at 3, 7, 9.” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“potential for abuse” due to multiple, staggered petitions “challenging the same patent and same claims.” Gen. Plastic, IPR2016-01357, Paper 19 at 17. The Board said, “The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 34–67, with PAN Pet. 18–50; see Prelim. Resp. 34, 37. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.5(a). Further, any differences between the Petition and PAN’s petition did not result from roadmapping to correct a deficiency in PAN’s petition because the Board instituted review in the PAN IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016- 01357, Paper 19 at 17. slip op. at 48
Discretionary denialPatents in suitUS 9,917,856 - PTAB · Dec 14, 2022 · IPR2022-01309 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, and granted Volkswagen’s motion to join the Apple IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the Apple IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. We find that the merits of the Petition warrant institution.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Having considered the issues, we agree with Petitioner that joinder will promote efficiency, because joinder will reduce the number of parallel challenges to the ’392 patent. Id. at 2. We also find that, because Petitioner will participate in an “understudy role,” joinder will simplify the schedule and eliminate the likelihood of duplicative efforts without prejudice to Patent Owner. Id. at 10–12.” slip op. at 10
NonePatents in suitUS 10,193,392 - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,923,941 - Semiconductor Components Industries, LLC D/B/A On Semiconductor v. Power Integrations, Inc.All claims unpatentablePTAB · Feb 14, 2018 · IPR2016-01589 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 14–19 are unpatentable: claims 14–16 as obvious and claims 17–18 as anticipated and obvious, and claim 19 as obvious; the motion to amend is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner’s witness, Dr. Kelley, testified “Stone is silent on its implementation, so it doesn’t actually tell you any of this is being done with current or any circuit structure.” Ex. 1030, Kelley Tr. 68:3–6. We agree. We determine that Stone studies the effect of modulating sequences on the resultant spectral power density of the square edged PWM waveform. Ex. 1020, 2, Figs 1–2. Stone’s disclosure of storing the modulation sequence for the frequency hopping spread spectrum in EPROM is not limited to any particular circuit implementation. Petitioner cites Dobkin as disclosing the relevant implementation— i.e., an implementation that reduces switching noise in a switched power regulator by generating a time varying secondary current to charge a capacitor that causes the output of VCO to vary the switching frequency of the regulator. Ex. 1004, 2:53–3:4. Dobkin varies the switching frequency by a constant amount, e.g., by 50 kHz between 75 kHz and 125 kHz, thereby spreading the noise over a broader spectrum. Id. Stone examines the effect of various switching frequency modulations. Referring to Patent Owner’s TNY256 device, Dr. Kelley testified, “you jitter somewhere around that baseline, but not very far” and “I think the prior reference Stone suggests varying the frequency very, very widely. And then if you read further on, it sort of confirms what I said about the practical difficulties in doing such an implementation.” Id. at 66:16–18, 67:21–68:3. Petitioner’s witness, Dr. Holberg, agrees with Patent Owner’s witness, Dr. Kelley, that Stone identifies potential problems of using large amounts of jitter and asserts that Stone provides a reason for a person of ordinary skill to select the low jitter embodiment of Stone. Ex. 1029, Holberg Suppl. Decl. ¶ 20 (citing (Ex. 1020, 4). Dr. Holberg further testified that a person of ordinary skill would have been motivated to adapt the magnitude of Dobkin’s primary and secondary current sources to implement Stone’s example of a small range of jitter. Ex. 1029, Suppl. Holberg Decl. ¶ 21. In view of the testimony of both Dr. Kelley and Dr. Holberg, we find that Petitioner has demonstrated that a person of ordinary skill would have been motivated to apply the teachings of Stone to jitter by a small amount the switching frequency in a power converter as configured by Dobkin, where the switching frequency is varied by changing a secondary current supplied to a circuit that drives a VCO by an amount less than the primary current.” slip op. at 12
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Petitioner responds that prior litigation concerned only claim 1 of the ’876 Patent, and Patent Owner has failed to show a nexus between the secondary considerations and the merits of the subject matter recited in claim 14. Pet. Reply 16–17. Petitioner argues that “any presumption of a nexus in the IPR is overcome by the fact that PO previously attributed the same evidence of secondary considerations to features of Claim 1 that are not present in Claims 14 or 17.” Id. at 16. Specifically, Petitioner contends that the “digital jitter” feature recited in claim 1 is not recited in claims 14 and 17. Id. at 17. Petitioner notes that Patent Owner’s Vice President of marketing, David Mathews, and Patent Owner’s expert, Dr. Kelley, both agreed that the counter and the digital to analog converter in claim 1 that are not recited in claim 14 make claim 1 digital. Id. at 17–18 (citing Ex. 1031, Transcript of Deposition of David Matthews (“Matthews Tr.”) 11:7–12:9; Ex. 1030, Transcript of Deposition of Dr. Arthur Kelley (“Kelley Tr.”) 59:20–60:16, 62:15–23). Petitioner further notes that, although Mr. Matthews stated he had no knowledge of patent matters and could not speak to the patent claims (Hrg.. Tr. 43:21–45:24), Dr. Kelley acknowledged that claims 1 and 14 are distinguished from each other because claim 1 recites a counter and a digital to analog converter that are not recited features of claim 14 (Pet. Reply 18). Thus, the very features Patent Owner relies upon to demonstrate non-obviousness of the invention recited in claim 1 are not features of the claims that are the subject of the challenges in this proceeding. In view of the above, we agree that the evidence is insufficient to show a nexus between the claimed subject matter and purported secondary or objective considerations as to claims 14–16. In consideration of the above, we are persuaded that there is insufficient persuasive evidence of objective considerations of non-obviousness for claim 14 and dependent claims 15 and 16. Having determined that Petitioner has demonstrated all the limitations of claims 14– 16 are taught in the prior art and that a person of ordinary skill would have been motivated to combine the references as discussed above, we conclude that Petitioner has shown by a preponderance of the evidence that claims 14 and 16 are unpatentable as obvious over Dobkin and Stone and that claim 15 is unpatentable as obvious over the combination of Dobkin, Stone and Manlove.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The dispositive question is “whether one skilled in the art would reasonably understand or infer” that a reference teaches or discloses all of the elements of the claimed invention. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991). A reference can anticipate a claim even if it “d[oes] not expressly spell out” all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would “at once envisage” the claimed arrangement or combination. In re Petering, 301 F.2d 676, 681 (CCPA 1962), Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom”). We are persuaded by Petitioner’s arguments concerning Habetler. A conventional implementation of a triangle wave generator uses known VCO circuitry that responds to a voltage control signal—Petitioner notes that Danstrom, discussed in the Petition, discloses such an oscillator where internal charging current, and thereby the slope of the triangle wave, is controlled by an input voltage. Pet. Reply 5–6 (citing Ex. 1011, 3:38–55, fig. 2). Patent Owner points out that voltage summing circuits are well-known. PO Resp. 16–17. But the notation in Habetler is not a standard circuit diagram with a junction or node, where the sum of the incoming and outgoing currents are equal. Instead, Habetler’s description of the implementation in Figure 4 explicitly discloses summing voltages using the same notation in Figure 4 that Habetler uses in Figure 5. In view of Habetler’s explicit disclosure and use of identical notation in Figures 4 and 5, we agree that in Figure 5 Habetler illustrates a summing block, and that a person of ordinary skill could reasonably infer the use of a well-known voltage summing amplifier to implement this function to supply a control voltage to Habetler’s triangle wave generator. Thus, we are persuaded that Petitioner has shown Habetler discloses all the limitations of method claim 17. Claim 18 recites the further limitation of clocking a counter with the output of the oscillator. Figure 5 of Habetler, as shown in Petitioner’s annotations, includes a triangle generator and a peak detector used to clock a counter. Thus, we are persuaded that Petitioner has demonstrated that Habetler discloses the further limitation recited in claim 18. For these reasons, we find that Petitioner has shown by a preponderance of the evidence that claims 17 and 18 are unpatentable as anticipated by Habetler.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“CLAIM CONSTRUCTION In our Decision to Institute, we construed the term “cycling one or more secondary current [voltage] sources” to mean the application of secondary current [voltage] sources to generate a time-varying secondary 2 U.S. Pat. No. 5,929,620, issued Jul. 27, 1999 (Ex. 1004). 3 D.A. Stone, B. Chambers, D. Howe, Easing EMC problems in switched mode power converters by random modulation of the PWM carrier frequency, IEEE 1996 (Ex. 1020). 4U.S. Patent No. 5,699,024, issued Dec. 16, 1997 (Ex. 1016). 5 Thomas Habetler, Acoustic Noise Reduction in sinusoidal PWM Drives Using a Randomly Modulated Carrier, IEEE Transactions on Power Electronics, vol. 6, No. 3, July 1991 (Ex. 1019). 6 European Patent Application EP0321794A2, filed Dec. 8, 1988 (Ex. 1006). current [voltage] in a manner that repeats over time. Dec. to Inst. 17. As neither party disputes this claim construction, we apply the same construction in this Decision. No other terms require construction.” slip op. at 7
Patent outcomesUS 6,249,876 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,249,876 - Riverbed Technology, Inc. / Dell Inc. et al. v. Realtime Data LLCAll claims unpatentablePTAB · Oct 30, 2017 · IPR2016-00978 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–4, 6, 10–16, 18–20, and 22 are unpatentable as obvious over Wang, Matsubara, and Franaszek under § 103(a).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners’ Declarant, Dr. Creusere, opines that a person of ordinary skill in the art relevant to the ’513 patent, and in the time period around 2001, would have been a person with “at least a bachelor’s degree in computer science, computer engineering, electrical and computer engineering, electrical engineering, or electronics and at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” Ex. 1013 ¶ 25. Patent Owner does not offer any alternative explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’513 patent. Based on our review of the ’513 patent, the types of problems and solutions described in the ’513 patent and cited prior art, and the testimony of Petitioners’ Declarant, we adopt and apply Dr. Creusere’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. We also note that, in this case, the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We are not persuaded by Patent Owner’s arguments. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Under the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “[A]n analysis of obviousness . . . may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Here, Wang teaches that if a file format is not identified or recognized, then the file is compressed with a default lossless compression algorithm. Pet. 19 (citing Ex. 1009, 4). Dr. Zeger, Patent Owner’s Declarant, agreed that a file format potentially could refer to a data type. Pet. Reply 13 (citing Ex. 1014, 87–88). With respect to Patent Owner’s argument that Wang never fails to recognize any data types, Franaszek recognizes the issue and teaches the use of a default compression algorithm if a data type is not recognized. Pet. 22 (citing Ex. 1011, 5:49–54). This is consistent with the holding in KSR, that any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed by” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We think Patent Owner’s argument and its reliance on In re Schweickert is misplaced here. First, as discussed supra, Petitioner combines Matsubara with Wang to address an automatic recognition issue and combines Franaszek with Wang to address a known issue when there is a lack of recognition. These are distinct issues with different reasons for their combination. In particular, Petitioner’s rationale for combining Matsubara and Wang is based on incorporating Matsubara’s construction of histograms using a file’s byte pattern, and then analyzing the pattern to determine the data type as the method for Wang to “automatically” determine the data type of a file. Pet. 22–24. Petitioner relies on Franaszek’s techniques for using a default compression algorithm to compress data types that may not be recognized or identified by Wang. Id. at 24–26. Second, in In re Schweickert, the Board affirmed the Examiner’s conclusion of obviousness, relying on a combination of two prior art references, with the bare assertion that “modifying [the references] would have been a predictable use of prior art elements according to their established functions—an obvious improvement.” In re Schweickert at 993. The Court found that there was no sufficient justification in the opinion by the Board why the combination would provide the asserted “obvious improvement.” Id. at 994. Moreover, the Court noted that it was apparent that substitution would “defeat[] the purpose” of the prior art the Board contended would be obvious to modify. Id. The Court found that even if the technology of the second prior art reference were “readily applicable” to the first prior art reference, there still needed to be an explanation as to “why a skilled artisan would still have a reason to combine [the references] to achieve the claimed invention,” which the Board did not do. Id. at 995. Here, unlike in Schweickert, Petitioner provided evidentiary support for modifying Wang’s method for automatically compressing files using an identification technique (Matsubara) since Wang teaches automatically recognizing the data type in the file, (Ex. 1013 ¶ 77) and using Franaszek’s default lossless compression algorithm when a file’s data type is not recognized because Wang teaches to use a default lossless compression algorithm when a file format is not identified or recognized (id. ¶ 86). Thus, Petitioner has articulated sufficient reasoning why a POSITA would have combined the teachings of Wang and Matsubara, as well as reasons why a POSITA would have also combined the teachings of Wang and Franaszek addressing a distinct issue, and how those combinations achieve the claimed invention. Accordingly, we are persuaded by Petitioner’s evidence and arguments that a person of ordinary skill in the art would have had reason to combine (1) Wang’s teaching to use a default lossless compression algorithm, such as LZW, when the file format is not recognized with Franaszek’s teaching of using a default compression method when the data type is not recognized; and (2) Wang’s method for automatically compressing computer files with Franaszek’s techniques for using a default compression algorithm to compress data types that are not recognized or identified. See Pet. 24–26, 30–42. Petitioner’s rationale for combining Wang and Matsubara is based on using Matsubara’s data analysis technique in Wang’s step of automatic data recognition, whereas Petitioner’s rationale for combining Wang and Franaszek is directed to both references suggesting default compression methods for unrecognized data. See Pet. 22–24, 30–42. Thus, each of the aspects that would be used from Matsubara and Franaszek with Wang are different. Therefore, we are persuaded by Petitioner’s evidence and arguments that one of ordinary skill in the art would have been led to combine the teachings of Wang, Matsubara, and Franaszek in the manner articulated by Petitioner.” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Patent Owner’s position that the file extension names and control information in Wang appear to be “descriptors” of a data block. Nevertheless, we are persuaded by Petitioner that the combination of Wang, Matsubara, and Franaszek teaches the recited analysis steps. Specifically, we are persuaded that Wang recognizes the format of a file by the extension name of the file and determines whether the file is a simple file or a compound file, then teaches automatically recognizing the type of data contained in the file and automatically compressing the data using a compression algorithm suitable for the type of data identified. Pet. 32 (citing Ex. 1009, 4; Ex. 1013 ¶ 115). In addition, we are persuaded Matsubara teaches determining a file’s data type based on an analysis of its byte patterns (i.e., something other than a descriptor) (Ex. 1011, 3:61–67), while Franaszek teaches analysis of a sample taken from uncompressed data appended to a data block and compressing a data block with a default compression algorithm when the data type is not identified (Ex. 1011, 4:30– 35, 5:18–21, 5:53–54, Fig. 2). Furthermore, based on the testimony of Dr. Creusere (Ex. 1013 ¶ 116), histograms of byte patterns of a file in Matsubara function as an analysis of a data block and not merely as a descriptor of the data block. Accordingly, we find the combination of Wang, Matsubara, and Franaszek teaches the recited analysis steps as limited by the “wherein” clauses of independent claims 1 and 15.” slip op. at 31
Patent outcomesUS 8,643,513 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,643,513
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.