• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00919 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan did not teach invocation of the second function only if safe, and the asserted three-reference combination lacked a sufficient motivation to combine.

  RulingsFinal written decision

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

    “reference to a “data container” (id. at 13:5152) and “network content” (id. at 4:3737), the concern over scripts embedded in web pages or “other web content” (id. at 1:3739), we conclude that the Specification of the ’154 patent uses the claimed “content” to refer broadly to the data or information, modified for processing, that the client receives from the network, where, in the case of the Internet, it may refer to a web page and its elements. This interpretation is consistent also with the meaning of the term in the art, as evidenced by dictionaries concerning computing and engineering. See content, Microsoft Computer Dictionary, 125 (5th ed. 2002) (Ex. 3002) (defining “content” as (1) “the data that appears between the starting and ending tags of an element in an SGML, XML, or HTML document. The content of an element may consist of plain text or other elements,” (2) “The message body of a newsgroup article or e-mail message;” and (3) “The ‘meat’ of a document, as opposed to its format or appearance.”); see also content, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY, 142 (2004) (Ex. 3001) (“Information, especially that which is available online, which may be any combination of text, audio, video, files, or the like.”). Accordingly, under the broadest reasonable interpretation in the context of the Specification and the surrounding claim language, we conclude that “content” is data or information, which has been modified and is received over a network.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “first function.” The Specification, however, does use the phrase “function call” to state that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3743 (emphasis added). The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. Therefore, we understand the Specification to use the phrase “function call” in the same sense as the phrase “call to a [] function.” That is, a program instruction specifies the function name and its parameters, where execution of the instruction results in the function providing a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Id. (displaying a stamp labeled “Engineering Periodicals, University of Washington, Jan 31, 2000”). Additionally, the cover page includes a label stating “Engineering Library Display Periodical Noncirculating until: Mar 08 2000.” Id. The stamps and labels are described by Mr. Melvin (“Mel”) DeSart, Head of the University of Washington Engineering Library, as evidence that the Library’s process was to stamp a received periodical and to affix a label when the periodical was chosen for display at the Engineering Library Display Periodicals area. Ex. 1036 ¶ 2. According to DeSart, the stamp and label convey that the article was received (and, therefore, stamped) at the University of Washington Libraries, on January 31, 2000, and was redirected to the Engineering Library, where it was added to the display and made “publicly available” from February 8, 2000 until March 8, 2000. Id. ¶ 3. We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8.” slip op. at 25

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2015-01979 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan does not teach conditional invocation of the second function, and the proposed three-reference combination lacks adequate motivation.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Patent Owner’s expert Dr. Medvidovic disagrees with Dr. Rubin’s opinion that instrumentation can occur in many hosts. Ex. 2002 ¶ 71. His testimony is unconvincing, however. Dr. Medvidovic does not address Dr. Rubin’s assessment that Khazan teaches instrumentation on a host that is different from the host that executes the wrapped function. Instead, Dr. Medvidovic asserts that Khazan does not disclose applications received through a network. Id. Further, Dr. Medvidovic opines that Khazan addresses viruses that infect applications resident within a computer’s file rather than in content received over a network. Id. We find that Dr. Medvidovic’s statements do not address Petitioner’s contention and ignore relevant teachings of Khazan. For instance, Khazan teaches that each host accesses information stored in data storage devices using a network (communication medium). Ex. 1003 ¶ 33. And any of Khazan’s components—e.g., static analyzer, dynamic analyzer, libraries, application executable, etc.—may be stored in the data storage system. See id. ¶ 72 (describing Figure 4A, which also lists the various lists 106, 111, 112). Therefore, we do not agree with Patent Owner’s narrow assessment of Khazan, which would limit application of Khazan’s techniques exclusively to a file resident in the host, rather than on content received over a network. Indeed, Khazan expressly discloses an embodiment in which instrumentation is performed “before invocation of the application” allowing for the instrumented library (or application) to be stored on a storage device. Ex. 1003 ¶ 75. That storage device, as discussed above, is accessed via a network. Accordingly, it is reasonable to conclude, and we find that, Khazan teaches or suggests that any host may receive over the network (communication medium 18) instrumented applications or libraries for processing at the host.” slip op. at 36

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8. We also find that skilled artisans exercising reasonable diligence would have been able to locate Sirer. In addition to the accessibility of the article on the library display area and on shelves, DeSart testified that the periodical containing the Sirer, “Operating Systems Review,” was catalogued in the library’s electronic catalog. Ex. 2006, 10:1311:23. The periodical could be searched by the title of the periodical and its keywords. Id.; 30:1431:9.” slip op. at 25

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

    “We find that Petitioner has not explained sufficiently how the reference’s teachings would be combined in order to achieve the claimed limitations. For instance, Petitioner’s assertion that the combination is predictable because the references continue to do what they did prior to the combination (Ex. 1002 ¶ 125) is conclusory and unreasonable in light of the various and necessary, yet unexplained modifications of Khazan’s teachings for combinability with those of Sirer and Ben-Natan.” slip op. at 60

  Patent outcomesUS 8,141,154 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.No claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01801 · APJ Peter P Chen · IPR · Final written decision

  Claims 30, 31, 33, and 40–46 were not shown unpatentable because Rabinovich required prior client access before replication, and Carter did not cure that limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Ratner, testifies that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 14. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 21–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 20. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. at 21. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “whether to replicate data object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating/migrating object xs only if the ratio of cnt(s,xs) over aff(xs) is greater than m, and the ratio can be greater than m only if cnt(s,xs) is greater than zero. PO Resp. 19; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication or migration step. This means that Rabinovich will not replicate or migrate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independent of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer.” slip op. at 18

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

    “30, for use with a computer game (claim 45) and with an interactive computer game accessed by at least two users (claim 46). Ex. 1001, 30:47– 54. In connection with its obviousness contentions, Petitioner makes no separate arguments why Rabinovich teaches or suggests shifting redundantly stored data based upon data transmission parameters between the servers independent of an access of the client. Pet. 45–47; Reply 17–18. Because claims 45 and 46 depend from claim 30, we find that Petitioner has failed to demonstrate by a preponderance of the evidence that Rabinovich teaches or suggests the limitations in these two dependent claims for the same reasons discussed above with respect to claim 30.” slip op. at 21

  Patent outcomesUS RE40,521 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
• Corelogic, Inc. v. Boundary Solutions, Inc.No claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00219 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 12–15 and 17–21 were not shown unpatentable because Oosterom did not disclose searching the database using a jurisdictional identifier.

  RulingsFinal written decision

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

    “In the Institution Decision, we construed “jurisdictional identifier” to mean “a number or other name, code, or description that identifies a jurisdiction.” Dec. 6. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’352 patent, which states: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).3 BSI does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 6, nor does CoreLogic challenge the construction in its Reply, see Reply 10. For this Final Written Decision, after considering the complete record, we maintain our construction of “jurisdictional identifier” as “a number or other name, code, or description that identifies a jurisdiction.”” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Having reviewed the arguments and evidence, we are not persuaded CoreLogic has demonstrated that Oosterom discloses searching the parcel map database “using a jurisdictional identifier” as recited in claim 12. Among the attributes in Oosterom’s parcel and boundary tables identified by CoreLogic in its analysis, only the municipality codes (i.e., “municip” in the parcel table and “L_municip” and “R_municip” in the boundary table) qualify as “jurisdictional identifiers.” See Ex. 1010, 513–14 (Tables 1, 2). The “object_id” of an object, e.g., a parcel or a boundary, is a nationwide unique identifier, but there is no indication in Oosterom that the object_id of a parcel or boundary identifies a jurisdiction. See id. at 512; see also id. at 513–14 (showing object_id attribute in parcel and boundary tables). As for the “ogroup” attribute in the parcel and boundary tables, Oosterom states only that it “indicates to which group the record belongs.” Id. at 519. Nothing in Oosterom describes the ogroup as identifying a jurisdiction. Although the municipality code attributes in the parcel and boundary tables identify jurisdiction, CoreLogic does not cite any portion of Oosterom that illustrates the use of municipality codes in searching the database for selected parcels as required by claim 12. See Pet. 45. Dr. Goodchild opines that the “municipality code . . . would allow us to search [the] parcel table by that jurisdiction and to identify all the parcels in that jurisdiction.” Ex. 2010, 19:22–24. He further testifies that in his analysis, he “was concerned with the specific kind of query identified in the claim, which is much narrower than Oosterom’s discussion [and] much more specific than the broad range of queries discussed by Oosterom.” Id. at 21:14–25. Ultimately, he states that the “question [he] analyzed is whether [Oosterom’s] database is capable of supporting the type of query identified in the claim.” Id. at 22:14–16 (emphasis added). Dr. Goodchild’s testimony that municipality codes could be used in searching Oosterom’s database, however, is insufficient to establish for anticipation purposes that Oosterom discloses the step of searching a multi-jurisdictional digital parcel map database for a selected parcel boundary polygon “using a jurisdictional identifier.”” slip op. at 10

  • ExcludeOther

    “C. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on Mr. Huxhold’s testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 12

  Patent outcomesUS 8,065,352 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,065,352
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01372 · APJ Linda M Gaudette · IPR · Final written decision

  The Board held claims 1–4, 14–20, 27, and 29 not unpatentable because Averbuj did not disclose a control module configured to generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-970. We, therefore, adopt our finding in IPR-970 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST. IPR-970 FWD, 10–11 (noting that our finding was “based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’434 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’434 patent. See Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “supports a finding that a customary meaning of “generate” to one of ordinary skill in the art is “cause.”1 We, therefore, determine the broadest reasonable 1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4, 6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable interpretation of “generate” does not encompass “cause,” we do not find this evidence relevant to our claim construction analysis. construction of “generate” is “produce” for the reasons stated above and in our Final Written Decision in IPR-970. We adopt and incorporate by reference our analysis and construction of the term “generate” in our Final Written Decision in IPR-970 (IPR-970 FWD, 24–33).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Moreover, the evidence in this proceeding fails to support a finding that Averbuj’s BIST controller 4 is configured to generate address signals for testing the memory devices in the manner claimed. In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1)) communicated to sequencers 8 are either received by user interface 22 via external input (id. at 5:41–43) or generated by another component (i.e., a component that is not part of BIST controller 4 circuitry) and stored in algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25, 55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in the algorithm memory of BIST controller 4 are generated by hand or by a tool, e.g., a compiler, and that “99 percent of the designs or chips do not have a compiler on-board”)). Multiplexer 24 selects one of the algorithms (i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same CMD_DATA (e.g., address signals) without transformation or modification. See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2, without consideration of any other disclosure in Averbuj, illustrates that a multiplexer selects an input from the algorithm memory and the output [] reflect[s] what’s in the input, based on the selection.”). Based on our interpretation of the terms “configured to” and “generate,” as discussed above, the claim recitation “a control module configured to generate address . . . signals for testing the memory devices” (claims 1, 20, and 29) does not read on Averbuj’s BIST controller 4, because the SET ADDRESS signal output by BIST controller 4 is produced by a component external to BIST controller 4, and merely selected by multiplexer 24 and provided to sequencers 8 without transformation or modification by BIST controller 4. In sum, after considering the parties’ arguments and evidence, we determine Petitioner has not shown, by a preponderance of the evidence, that Averbuj discloses “a control module configured to generate address . . . signals for testing the memory devices” as recited in independent claims 1, 20, and 29. Petitioner does not correct this deficiency in its challenges as to dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because Petitioner has not identified in Averbuj a teaching of each and every limitation recited in claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by Averbuj.” slip op. at 30

  Patent outcomesUS 8,001,434 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,001,434
• Arctic Cat, Inc. v. Polaris Industries, Inc.No claims unpatentable
  PTAB · Feb 4, 2016 · IPR2014-01428 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–20, 22–33, and 35 were held patentable over the presented grounds because the cited combinations did not remedy the missing drive-shaft limitation.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “transmission and the front axle assembly” and “a rear drive shaft extending between the transmission and the rear axle assembly.” Essentially, Patent Owner asserts that a given drive shaft must account for the entire distance between the transmission and the respective axle assembly in order to meet the aforementioned claim limitation, whereas Petitioner asserts that if the given drive shaft accounts for any amount of distance between the transmission and the respective axle assembly, the aforementioned claim limitation is met. PO Resp. 15–18 (citing Exs. 1002, 2029, 2085); Pet. Reply 2–7 (citing Exs. 1002, 1069, 2085). We discern that the key limitation in this regard is “extending between,” or more generically, “extend between.” Patent Owner provides excerpts from Merriam-Webster’s Dictionary concerning the definition of “extend,” of which the pertinent definitions would be as follows: “to stretch out to fullest length”; “to cause to reach (as in distance or scope)”; “to stretch out in distance, space, or time”; “to reach in scope or application.” Ex. 2085, 442–443. Use of words such as “fullest” and “reach” would appear to support Patent Owner’s proposed construction. When these definitions of “extend” are combined with the word “between,” which introduces the concept of discrete distances, we are persuaded that to “reach” a “fullest” discrete distance supports even further Patent Owner’s proposed construction. Patent Owner identifies the following portions of the specification as informing one of ordinary skill as to what is meant by “extend between,” and it is consistent with the aforementioned plain and ordinary meaning of “extend between”:” slip op. at 9

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

    “and Reply, as well as all supporting evidence, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1–3, 5–13, 20, 23, and 25–33 are obvious over a combination of Hickey and Hill. Pet. 8–28; PO Resp. 22–46, 56–60; Pet. Reply. 7–25. Independent claim 1, the only independent claim at issue, recites “a front drive shaft extending between the transmission and the front axle assembly.” As set forth above, we construe the aforementioned claim limitations as requiring that a front drive shaft, and only that front drive shaft, must account for the entire distance between the transmission and the front axle assembly. Petitioner cites front propeller shaft 22 of Hickey as corresponding to the aforementioned “front drive shaft.” Front propeller shaft 22 is connected to transmission 14, however, via at least interaxle differential 20 and universal joint 26. Figure 1 of Hickey discloses that that front propeller shaft 22 stops well short of transmission 14, and so does not account for the entire distance between the transmission and the front axle assembly. While there could perhaps be some overlap in the distance covered by front propeller shaft 22, interaxle differential 20, and universal joint 26, Petitioner has not shown such overlap, and in any case, we determine that any such overlapping part of front propeller shaft 22 still would not account for the entire distance between the transmission and the front axle assembly. Accordingly, we determine that Hickey does not disclose or suggest “a front drive shaft extending between the transmission and the front axle assembly,” as recited in independent claim 1. Moreover, Petitioner does not cite Hill for remedying the aforementioned deficiencies of Hickey. Each of dependent claims 2, 3, 5–13, 20, 23, and 25–33 depend ultimately from independent claim 1, and include the same deficiency.” slip op. at 15

  • ExcludeOther

    “claims 1–38 of the ’405 patent are unpatentable. Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 17

  Patent outcomesUS 8,596,405 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,596,405
• Igb Automotive Ltd. / I.G. Bauerhin GmbH v. Gentherm GmbHNo claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00667 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under §103 because the proposed combinations did not establish the claimed attachment component or a sufficient reason to replace Larsson’s sealing bellows.

  RulingsFinal written decision

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

    “structure that accomplishes the attachment or connection of one structure to another. For instance, attachment component 72 constitutes a mechanism for attaching a blower to insert 10. Ex. 1001, 7:59–61. Indeed, the ordinary meaning of “attachment” is “the physical connection by which one thing is attached to another.”6 In other words, at its core, the meaning of the term “attachment” conveys that an “attachment component” must be a component that facilitates an act of physical connection. In that respect, we conclude that “attachment component” requires more than “simply a member having an opening therein” as urged by IGB. See Pet. Reply 2. Accordingly, on the record now before us, and consistent with the Specification of the ’573 and the ordinary meaning of the term “attachment,” an “attachment component” is understood as a component that physically connects structures to one another. Furthermore, in the context of claim 1, the attachment component must be “adapted to receive a blower housing.” Thus, the claim requires that the “attachment component” is a component that is configured so as to physically connect the blower housing to another structure.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundTeaching away foundDecided for patent owner

    “20 and fan 19 does realize some benefit of vibration dampening and noise reduction, careful review of IGB’s proposed substitution of Pfahler’s sleeve 20 and fan 19 for Larsson’s bellows 41 and suction device 26 raises issues tending to undermine IGB’s obviousness position vis-à-vis the claims of the ’573 patent. In that regard, as noted by Gentherm (PO Resp. 18–19, 24), and as testified to by Dr. Rice (Ex. 2001 ¶¶ 39, 52), Larsson places considerable emphasis as a part of its disclosed invention on the sealing benefit provided by bellows 41. Indeed, Larsson makes clear that bellows 41 is a “special characteristic of the invention” and “prevent[s] air from leaking to the suction device through pores in the filling material” that surrounds channel 25. Ex. 1004, 5:59–63. The leakage prevention is described as acting in concert “with the low flow resistance of the insert 15” to demonstrate “improved efficiency” of Larsson’s device. Id. at 6:47–54. The underlying premise of IGB’s combination incorporating Larsson and Pfahler, however, is that one of ordinary skill in the art would have omitted bellows 41, i.e., the very component in Larsson characterized as a “special characteristic of the invention,” and substituted sleeve 20 therefor. IGB does not offer, as a part of its Petition or Reply, an adequate explanation, or point to record evidence, tending to show that a skilled artisan would have viewed Pfahler’s sleeve 20 as a component interchangeable with Larsson’s bellows 41. Yet, such interchangeability lies at the heart of IGB’s assertion of obviousness stemming from the combination of Larsson and Pfahler. IGB does not point to content of the record demonstrating that Pfahler’s sleeve 20 is understood as also operating as a sealing component. Indeed, we observe that, in contrast with Larsson’s bellows 41, sleeve 20 is configured with a closed upper end and multiple “oblong holes 28” for distributing air in a circumferential direction. Ex. 1004, 3:45–46, 55–65, Fig. 2; see Ex. 2001 ¶ 49. In that respect, due to the particular positioning and configuration of sleeve 20 in Pfahler’s cushion assembly, the sleeve is not understood as providing the type of sealing that is attributed to Larsson’s bellows 41.” slip op. at 20

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “may touch or contact some structure associated with suction device 26, we are not persuaded that such contact amounts to physically connecting the suction device to some other structure. To that end, we do not discern that bellows 41 forms an “attachment component adapted to receive a blower housing” as is required by claim 1. We note also the testimony of Dr. Rice, that Larsson’s bellows 41 does not amount to the required “attachment component.” Ex. 2001 ¶¶ 37–43. Although IGB contends that during cross examination of Dr. Rice, he “confirmed that the bellows 41 provides a connection to the air mover of Larsson” (Pet. Reply 3), we do not discern that Dr. Rice’s recognition that Larsson’s bellows 41 may contact some portion of Larsson’s suction device constitutes testimony that the bellows is the required attachment component. We are not persuaded by IGB that Dr. Rice’s testimony in his Declaration that bellows 41 does not form the required “attachment component” should be discounted.” slip op. at 18

  Patent outcomesUS 7,637,573 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,637,573
• Trivascular, Inc. v. Shaun L.W. SamuelsNo claims unpatentable
  PTAB · Dec 3, 2014 · IPR2013-00493 · APJ Richard E Rice · IPR · Final written decision

  Claims 1, 2, and 4–24 were not shown unpatentable over either instituted §103 combination because the references did not establish the required inflatable protrusions.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “not proved that claims 1, 2, 6–15, and 18–24 would have been obvious over Samuels ’851 and Todd, or that claims 1, 4–6, 9–11, 13, 14, 16, 17, and 19– 21 would have been obvious over Lazarus and Todd. Accordingly, Dr. Samuels’s Motion to Amend, which is contingent on claims 1, 14, and 23 being found unpatentable, is moot. IV. ORDER For the reasons given, it is ORDERED that claims 1, 2, and 4–24 of U.S. Patent No. 6,007,575 are not determined to be unpatentable; and FURTHER ORDERED that Dr. Samuels’s Motion to Amend is dismissed as moot.” slip op. at 24

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

    “TriVascular argues that “inflatable protrusions can be ‘solid’ structures such as barbs or[,] in the case of [] some of the prior art examples, solid circumferential ridges.” Reply 10 (citing Clark. Dep., Ex. 1021, 135:6–16 (discussing Samuels ’851 (Ex. 1002))). TriVascular’s proposed claim construction, however, does not accord with the plain meaning of “inflatable” as used in the Specification, i.e., expandable by being filled with fluid. See, e.g., Ex. 1001, Abstr. 3–4, 3:55 (“inflatable chamber”), 1:30 (“inflatable balloon”), 2:33, 38, 3:30 (“inflatable cuff”), 3:33–34 (“inflatable ridges”). Under the plain meaning of “inflatable” as used in the Specification, solid ridges are not “inflatable,” because they are not capable of being filled with fluid. See Resp. 5–8; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (holding that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification). Further, under TriVascular’s proposed claim construction, there is no meaningful difference between “protrusions” disposed on an inflatable cuff and “inflatable protrusions” disposed on an inflatable cuff. See Tr. 10:7–14. Trivascular’s proposed claim construction, therefore, fails to give any meaning to “inflatable” in “inflatable protrusions,” and by not giving effect to all words of the claim, runs afoul of a cardinal rule of claim construction. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim,” so that physical structures and characteristics described specifically in a claim are not rendered “merely superfluous.”).” slip op. at 7

  • Expert testimonyPetitioner expert discountedOther

    “inflatable balloon protuberances, including “inflatable ridges.” Pet. 22 (citing Ex. 1008, Figs. 5–9), 41 & 51 (claim chart) (quoting Ex. 1008, 7:35– 39, citing Ex. 1008, Fig. 7). At oral argument, TriVascular clarified its analysis of Todd’s disclosure, and asserted that the protuberances disclosed in Todd are hollow, and themselves inflatable. Tr. 6:5–12:20. TriVascular cited in support of its position the statement in column 7 of Todd that: “When inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted.” Id. at 6–7; Ex. 1008, 7:37–39 (emphasis added); see Pet. 40–41 (Claim Chart II, element 1a-3, quoting Ex. 1008, 7:35–39). TriVascular, however, has not provided a declaration, or any other evidence, to establish that a person of ordinary skill in the art would understand Todd to disclose protuberances that are hollow, and themselves inflatable. Dr. Samuels does not agree that Todd discloses “inflatable protrusions.” Resp. 12. Dr. Samuels asserts that “the region between the inner and outer surfaces of balloon 26 of Todd is solid . . . and any provided roughened surfaces or protuberances are also solid.” Id. (citing Ex. 1008, Figs. 4 & 8; Ex. 2004). On the record before us, TriVascular has failed to show that Todd discloses “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The protuberances disclosed in Todd project outwardly “from the outer surface” of inflatable balloon 26. See Ex. 1008, 6:58–59, 62–63. As such, the protuberances are disposed on the exterior surface of the inflatable balloon, and are not in fluid communication with the balloon’s inner chamber 32. See Resp. 12; Ex. 1008, 7:15–16, Figs. 2, 4 & 5 (describing knobs 40 as solid structures on the outer surface of the balloon), 7:32–34, Fig. 6 (describing “cross-hatched pattern 44 projecting outwardly from the exterior surface of balloon 26”), 7:35–39, Fig. 7 (describing “outwardly projecting spiral ridge 48 wound about the exterior surface of balloon 26”), 7:40–46, Fig. 8 (describing “outwardly projecting annular rings 52 wound about the exterior surface of balloon 26”). Todd discloses expansion means in fluid communication with inner chamber 32 for inflating balloon 26 (id. at 7:53–60), but does not disclose expansion means for inflating the protuberances, either separately or in conjunction with inflation of the balloon. Todd discloses, simply, that “when balloon 26 is inflated, the gripping means [i.e., the protuberances] on the exterior of the balloon contact and grip the walls of the body passageway.” Id. at 8:14–16. Trivascular has not persuaded us, moreover, that a person of ordinary skill in the art would have understood Todd’s statement “[w]hen inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted” (id at 7:37–39 (emphasis added)), to teach or suggest that spiral ridge 48 is expandable by being filled with fluid. See Tr. 6–7. Other than that isolated statement, there is no suggestion, indication, or hint in Todd that any of the disclosed protuberances is hollow such that it can be filled with fluid and inflated. To the contrary, as discussed above, Todd” slip op. at 15

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

    “We determine that Trivascular has not provided a sufficient rationale to support substituting the ridges of Todd for just the barbs of Samuels ’851. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). TriVascular also contends that it would have been obvious to eliminate both the recesses and barbs of Samuels ’851, and to substitute “a circumferential ridge, similar to the one that is in Todd.” See Tr. 15:24– 17:15. TriVascular asserts three reasons why combining the references in that fashion would satisfy the requirement for “inflatable protrusion(s) including at least one circumferential ridge disposed about the inflatable cuff”: (1) the ridges are “inflatable” in the combination simply because they are riding on an inflatable cuff; (2) the ridges in Todd are themselves inflatable; and (3) use of ridges that are themselves inflatable would have been obvious, as they would take up less volume and be easier to insert in blood vessels than ridges that are not themselves inflatable. See id. at 17:16–18:14. None of those reasons is persuasive. The first reason is not persuasive because it does not satisfy the requirement for “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The second reason is not persuasive because we do not agree that Todd discloses ridges that are themselves inflatable. See section II.B.1.b supra. Lastly, the third reason is not persuasive because TriVascular has not established that a person of ordinary skill in the art would have known to use, on an inflatable cuff, circumferential ridges that are themselves inflatable. The evidence is to the contrary. See, e.g., Ex. 2002 (Samuels Decl.) ¶ 4.c (“No one else in the medical field, to the best of my knowledge, ever proposed or suggested an inflatable ridge-based sealing arrangement prior to my invention, ever.”); Ex. 1020 (Samuels Dep.), 138:20–140:7 (affirming testimony in ¶ 4.c of Samuels Decl.), 187:11–14 (testifying that inflatable ridges were not known in the medical field); Ex. 2003 (Clark Decl.) ¶ 8 (“[B]eing able to reduce the overall diameter by just deflating the fluid chamber and, correspondingly, the ridges is an intriguing concept, one which was not known, to the best of my knowledge, in the medical field prior to Samuels ’575.”); Ex. 1021 (Clark Dep.), 82:19–21 (“I’m not aware of any inflatable protrusions to support an endograft prior to Samuels [’575].”).” slip op. at 19

  Patent outcomesUS 6,007,575 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,007,575

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.