• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01179 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because the substantively identical petition did not show a reasonable likelihood of proving any claim unpatentable, and denied joinder.

  RulingsInstitution decision

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

    “After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1073 proceeding, we denied institution, because “Petitioner [in the 1073 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01073 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1073 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1073 proceeding. IPR2022- 01073 Paper 10. B. Motion for Joinder” slip op. at 4

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

    “The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1073 proceeding.” Mot. 1. Because we did not institute review in the 1073 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 8,630,234
• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01178 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because the identical petition and evidence had not shown a reasonable likelihood of prevailing, and denied joinder.

  RulingsInstitution decision

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

    “After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1072 proceeding, we denied institution, because “Petitioner [in the 1072 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01072 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1072 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1072 proceeding. IPR2022- 01072 Paper 10. B. Motion for Joinder” slip op. at 4

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

    “The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1072 proceeding.” Mot. 1. Because we did not institute review in the 1072 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 8,630,234
• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01181 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because the substantively identical petition in IPR2022-01075 failed to show the cited art disclosed every claim limitation; it also denied joinder.

  RulingsInstitution decision

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

    “After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1075 proceeding, we denied institution, because “Petitioner [in the 1075 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01075 Paper 10, 20–21. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1075 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01075 Paper 10) in the 1075 proceeding.” slip op. at 4

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

    “B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1075 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1075 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 10,880,721
• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01180 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because the substantively identical petition and evidence had not shown that the cited art disclosed every limitation of any challenged claim; it also denied joinder.

  RulingsInstitution decision

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

    “the Preliminary Response in the 1074 proceeding, we denied institution, because “Petitioner [in the 1074 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01074 Paper 10, 25. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1074 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01074 Paper 10) in the 1074 proceeding.” slip op. at 4

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

    “B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1074 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1074 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 10,880,721
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01073 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because Teodosiu did not disclose the claimed location identifier, and the proposed combinations did not cure that deficiency.

  RulingsInstitution decision

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

    “For all its grounds, Petitioner relies on Teodosiu for allegedly disclosing “a location identifier separate and distinctive from said callee identifier, said location identifier identifying a location of the mobile telephone” as recited in each of the challenged independent claims of the ’234 patent. See Pet. 19–21 (claim 30), 44–45 (claim 46), 56 (claim 62). Petitioner relies on its showing as to this limitation of claim 30 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 13

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “and 93 of the Mir Declaration. See Pet. 19–20 (citing Ex. 1002 ¶¶ 87–89, 93). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses receiving an access code request message including “a location identifier identifying a location of the mobile telephone” as recited in each independent claim of the ’234 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 87. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that “Teodosiu’s method includes a network server receiving from the mobile device (‘mobile telephone’) a request (‘access code request message’) including a selected contact (‘callee identifier’) and mobile device 110 phone number, which includes geographic information (‘location identifier’).” Id. ¶ 89. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a location of the mobile telephone.”” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “We interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that it is not necessary to expressly interpret any claim language in order to decide whether to institute review. B. Legal Standards” slip op. at 8

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address each challenge below. slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,630,234
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01072 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show that the cited art disclosed the claimed location identifier.

  RulingsInstitution decision

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

    “’234 patent. See Pet. 24–25 (claim 1), 36 (claim 11), 46 (claim 20). Petitioner relies on its showing as to this limitation of claim 1 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 14

  • BurdenDecided for patent owner

    “For all its grounds, Petitioner relies on Teodosiu for allegedly disclosing “a location identifier separate and distinctive from said callee identifier, said location identifier identifying a location of the mobile telephone” as recited in each of the challenged independent claims of the ’234 patent. See Pet. 24–25 (claim 1), 36 (claim 11), 46 (claim 20). Petitioner relies on its showing as to this limitation of claim 1 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the Mir Declaration. See Pet. 24 (citing Ex. 1002 ¶¶ 93–97). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a location of the mobile telephone” as recited in each independent claim of the ’234 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 95. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 96. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a location of the mobile telephone.”” slip op. at 16

  • Skill levelOther

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address each challenge below. C. Prior Art slip op. at 9

  Nonecites Phillips · KSR
  Patents in suitUS 8,630,234
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01075 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the cited art disclosed the claimed location identifier limitations.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioners cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9

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

    “Ex. 1005 ¶ 66. In this paragraph, Teodosiu is determining what phone number to supply to the mobile device to use to access the VoIP system. See id. ¶¶ 67–69. Teodosiu discloses selecting a VoIP phone number with the same area code as the mobile device phone number and “which is close in geographic vicinity to the phone number associated with mobile device 110.” Id. ¶ 66. But Patent Owner argues, and we agree, that the area code in the phone number of Teodosio’s mobile device is not “a location identifier identifying a geographical location of the wireless device.” See Prelim. Resp. 34–41. The area code does not change as the geographical location of the wireless device changes. The area code of the phone number associated with the mobile device does not identify the geographical location of the wireless device. number of the mobile device to select a VoIP phone number “which is close in geographic vicinity to the phone number associated with mobile device 110.” Ex. 1005 ¶ 66. And, because the location of the mobile device is not identified by the area code of the phone number associated with the mobile device, by disclosing receipt of the mobile device phone number (id. ¶ 63, Fig. 4 (ref. no. 440)), Teodosiu does not disclose “receiving/receive from the wireless device an access code request message including . . . a location identifier identifying a geographical location of the wireless device.” as recited in the challenged independent claims of the ’721 patent.” slip op. at 15

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the Mir Declaration. See Pet. 17 (citing Ex. 1002 ¶¶ 81–83). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses receiving “a location identifier identifying [or associated with] a geographical location of the wireless device” as recited in the challenged independent claims of the ’721 patent by disclosing receipt of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 81. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 83. Dr. Mir fails to adequately explain how or why the area” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,880,721
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.

  RulingsInstitution decision

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

    “In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,880,721
• Apple Inc. v. Identity Security LLCRehearing denied
  PTAB · Dec 15, 2022 · IPR2022-00171 · APJ Sharon Fenick · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving the denial of institution for claims 1–4, 12, and 13 unchanged because Apple showed no abuse of discretion or overlooked matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. THE REQUEST FOR REHEARING On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a surreply.” Id. Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”” slip op. at 2

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “conclusions on the basis that Dr. Russ’s testimony is conclusory. Id. at 11. We disagree. We indicated in the Decision Denying Institution that Dr. Neuman’s testimony is conclusory. Dec. 22. For instance, Dr. Neuman testifies that the modifications that would have been needed for Petitioner’s proposed combination would have been “straightforward.” Ex. 1003 ¶ 81. Dr. Neuman’s testimony, however, is simply a conclusory statement without persuasive, supporting explanation or evidence. Id. As we indicated in the Decision Denying Institution, “Petitioner does not indicate or provide evidence supporting that the proposed modifications would have been made without introducing complexities.” Dec. 24. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 3

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

    “Decision to Institute as relating to only convenience. Req. 1–2, 8–11. In the Decision Denying Institution, we explained that Petitioner’s reasons to combine are insufficient because “Petitioner does not address the full teachings of Gullman.” Dec. 22, 25. We stated “[c]ontrary to Petitioner’s assertion (Pet. 33; Ex. 1003 ¶ 81) and consistent with Patent Owner’s position and Dr. Russ’s testimony that Gullman’s system eliminates the risk of the biometric template and input from being stolen during transmission (Ex. 2001 ¶ 119), Gullman describes its system as ‘secure,’ providing ‘secure identification,’ and, importantly, as providing ‘[t]ransmission security.’” Dec. 22–23 (citing Ex. 1004, 6:46–56). We particularly noted (id. at 23) Gullman’s teachings as follows: The method and apparatus of the present invention have significant advantages over known security systems. Reliable and secure identification is provided which eliminates the need for the user to memorize a code or carry a printed memorandum of the code. Transmission security is provided which is convenient, secure and useful on existing access devices of host systems in current use. In particular, the method and apparatus obviate the need for specially-designed hardware additions or modifications to existing access devices. Ex. 1004, 6:46–56. As we noted in the Decision to Institute, the Petition did not address Gullman’s teaching that its system provides “significant advantages” over known, more complex systems, which might have led an ordinarily skilled artisan away from using Padgett’s more complicated hashing process. Dec. 23–24.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 8,020,008
• Forescout Technologies, Inc. v. Fortinet, Inc.All claims unpatentable
  PTAB · Nov 15, 2022 · IPR2021-00914 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–13, 15–18, and 20 are unpatentable as obvious over Patrick alone, Patrick and Roese, or Patrick and Gilde.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner contends “a person of ordinary skill in the art . . . at the time of the ’314 patent’s effective filing date would typically be a person with a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity, or a person with a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Pet. 4 (citing Cole Decl. ¶¶ 26–28). For our Institution Decision, we adopted this definition. Institution Dec. 7. Patent Owner states that it “does not object” to Petitoner’s definition of the person of ordinary skill. PO Resp. 22. Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We therefore continue to apply Petitioner’s formulation for this decision.” slip op. at 7

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Notwithstanding the parties’ initial position that claim construction is not required, for our Institution Decision we followed the guidance provided by the ’314 patent specification on the meaning of certain terms appearing in the patent. Institution Dec. 8–9. Thus, we construed the following terms: 1. Administrator/Network Administrator – “Administrators delegate workload to Sponsors, view reports and audit trails.” Ex. 1001, 2:2–4. “A Network Administrator has the responsibility of delegating the network management workload.” Id. at 2:11–12. 2. Sponsors – “Sponsors administer control over endpoints requiring network resources.” Id. at 2:4–5. 3. Profiles – “Profiles define the scope and limitations of a Sponsor's” slip op. at 8

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

    “We disagree with Patent Owner’s argument and find that Petitioner demonstrates a motivation to combine the teachings of Patrick and Roese. Petitioner provides detailed testimony by Dr. Cole supporting the conclusion that a person of ordinary skill would have been motivated to combine Patrick and Roese. Pet. Reply 20–22 (citing Cole Decl. ¶¶ 216–224). Dr. Cole testifies that “Patrick teaches that its system provides ‘flexible policies’ and ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 216 (quoting Ex. 1003 ¶ 41) (alteration in original). He testifies that “Roese describes an exemplary network security system” that is “able to enforce certain restrictions, on an initial and continual basis, based on locations of devices.” Id. ¶ 217 (citing Ex. 1004 ¶ 33) (internal quotation marks omitted). He concludes that “Roese is . . . an example of a ‘suitable entity which can be interacted with programmatically’ as identified in Patrick.” Id. ¶ 218 (citing Ex. 1003 ¶ 41) (internal quotation marks omitted). We agree with Dr. Cole that “Patrick provides a specific motivation to combine, by emphasizing its use of ‘flexible policies’ and explaining its invention ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 222 (quoting Ex. 1003 ¶ 41). Dr. Cole testifies that a person of ordinary skill “would recognize that Roese’s system is one such third party security product, as suggested by Patrick, and also provides additional benefits relating to managing devices, as described in Roese.” Id. ¶ 223. Dr. Cole’s testimony also persuades us of the existence of a reasonable expectation of success in making the combination. Id. ¶ 218 (“A [person of ordinary skill] would therefore understand, consistent with Patrick’s express suggestion, that Patrick’s policy definitions and delegations of authority could be used together with Roese’s network security system to allow for policies specifically focused on managing devices.”). Patent Owner contends that “Petitioner . . . fails to demonstrate with respect to each of the disparate features of Roese relied upon, what the predictable results would be and how it would ‘provide a means to delegate and enforce policies relating to devices’ as alleged by Petitioner.” PO Resp. 42. We do not agree that Petitioner’s showing of motivation to combine, summarized supra, is insufficient. KSR instructs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR Int’l Co., 550 U.S. at 421, see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find, for the reasons given, that Petitioner’s showing meets this standard and is sufficient. Petitioner, therefore, has demonstrated a motivation to combine Patrick with Roese with a reasonable expectation of success.” slip op. at 28

  • BurdenDecided for petitioner

    “We disagree with Patent Owner’s argument that the Petition is insufficiently particular as to this or any other limitation. See PO Resp. 34– 35. For example, as discussed supra, Dr. Cole’s testimony supports Petitioner’s position that Patrick discloses transferring responsibility with specific references to Patrick. Cole Decl. ¶¶ 110–116. Dr. Cole explains how Patrick teaches delegating authorization from one subject to another. Id. ¶ 111. He relies on Figure 11 of Patrick to further illustrate his opinion. Id. ¶ 112. We do not agree that this testimony is insufficiently specific to show how Patrick meets this limitation or that Petitioner has failed to carry its burden. Moreover, other examples from Dr. Cole’s testimony are presented in the Petition at pages 20–21. There is no improper incorporation by reference to Dr. Cole’s testimony, as suggested by Patent Owner. PO Resp. 35. We therefore do not agree with Patent Owner (see id.) that “the Board should reject all grounds” due to lack of specificity in Petitioner’s case.” slip op. at 23

  Patent outcomesUS 8,458,314 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,458,314

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