- Microsoft Corporation v. Bradium Technologies LLCNo claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01432 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable because Microsoft did not establish that a skilled artisan would have been motivated to combine Rutledge, Ligtenberg, and Cooper.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Person of Ordinary Skill in the Art Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination—obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Unigene Labs v. Apotex, Inc, 655 F.3d 1352, 1360 (Fed. Cir 2011). Petitioner contends that, in addition to his educational background, a person of ordinary skill in the art would have at least five years of experience in a technical field related to geographic inform systems (GIS). Pet. 11–12. The Patent Owner Response does not dispute explicitly Petitioner’s description of a person of ordinary skill in the art. Nevertheless, Petitioner contends there is a dispute as to the level of ordinary skill in the art because Patent Owner’s expert, Dr. Chandrajit Bajaj, ignores the teachings in the ’794 Patent concerning the relevance of geographic information systems (GIS) and that, unlike Petitioner’s expert, Dr. William Michalson, there is no suggestion on the record that Dr. Bajaj has any experience in GIS systems. Pet. Reply. 2; Hr’g. Tr. 6–8. Petitioner undermines its position that qualifying as a one of ordinary skill requires five years of experience in GIS by arguing the even a person without GIS experience would consider GIS highly relevant to the problem presented in the ’794 Patent and would not ignore this issue. Pet. Reply 2. Thus, although Petitioner attacks the credibility of Dr. Bajaj based on his testimony concerning the applicability of the references, we do not discern any genuine dispute as to the level of ordinary skill in the art.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“in Rutledge or Ligtenberg and that the Petition does not assert that Rutledge or Ligtenberg discloses a priority system. Hr’g Tr. 48. Although Petitioner contends that Rutledge and Ligtenberg suggest a priority system (id.), Petitioner argues “[b]ut the reason we added Cooper is because there was nothing specific as to how you would actually do that or how you could possibly do that” (id. at 19). Thus, Petitioner appears to acknowledge hindsight reasoning in its analysis and does not answer our question as to why a person of ordinary skill would have been motivated to apply the priority techniques in Cooper to Rutledge and Ligtenberg. Patent Owner argues that Petitioner frames its argument at a level of generality that obscures the incompatibility of Cooper with Rutledge and Ligtenberg. PO Resp. 31. We agree with Patent Owner that the level of abstraction argued by Petitioner is insufficient to overcome the incompatibility issues identified by Patent Owner. Id. at 31–32. The Petition does not explain why or how a person of ordinary skill would have applied the importance values Cooper uses to determine priority in a 3D environment to Rutledge and Ligtenberg’s 2D environment. Id. at 32–34. For the reasons discussed above, Petitioner has not demonstrated by a preponderance of the evidence that a person of ordinary skill would have been motivated to combine the teachings of Rutledge and Ligtenberg with the priority teaching of Cooper.” slip op. at 22
- ExcludeMotion to exclude, deniedDenied
“Notwithstanding Dr. Michalson’s incorporation of his earlier declaration by reference, Petitioner contends that it was improper for Patent Owner to cross-examine Dr. Michalson on the subject matter of his first declaration, because Patent Owner waived the opportunity to conduct such cross-examination when it filed its Patent Owner Response without taking any testimony from Dr. Michalson and that Patent Owner’s cross-examination and Motion for Observations on Cross-Examination (Paper 40) should have been limited only to matters in Dr. Michalson’s second declaration submitted in support of Petitioner’s Reply. Mot. to Exclude. 2. This issue is moot because this Final Written Decision does not cite to any of the Subject Exhibits. For that reason, we do not address the matter on the merits and dismiss Petitioner’s Motion to Exclude.” slip op. at 24
Patent outcomesUS 7,139,794 not shown unpatentable§ 103 obviousnessPatents in suitUS 7,139,794 - Amit Agarwal v. Immersion CorporationInstitution deniedPTAB · Sep 19, 2016 · IPR2016-00807 · APJ Minn Chung · IPR · Institution
Institution was denied for all challenged claims because the petition did not show a reasonable likelihood of prevailing on either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“35 U.S.C. § 103(a) over the combination of Rosenberg and Simon. Pet. 17– 20. Claims 5 and 15 depend from claims 1 and 12, respectively, and further recite “wherein the display signal is configured to display a keypad comprising a plurality of softkeys.” Claims 7 and 17 depend from claims 1 and 12, respectively, and further recite “wherein the plurality of softkeys comprises one softkey for each digit from 0 to 9.” Similar to its challenges based on anticipation discussed above, Petitioner relies on Rosenberg as disclosing all of the limitations of underlying independent claims 1 and 12. Id. at 17. Simon is relied upon by Petitioner only to teach the additionally recited limitations of claims 5, 7, 15, and 17. Id. at 17–19. Hence, Simon cannot and does not remedy the above-identified deficiencies in Petitioner’s analysis of challenged independent claims 1 and 12. Accordingly, on this record, the information presented in the Petition does not demonstrate a reasonable likelihood of Petitioner prevailing in its challenge to claims 5, 7, 15, and 17 under 35 U.S.C. § 103(a) as obvious over the combination of Rosenberg and Simon.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim interpretation is needed” (Pet. 1), and Patent Owner does not propose any claim constructions in this case (Prelim. Resp. 10). Having considered the arguments and evidence presented, we determine that no claim terms require express interpretation for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,773,356 - Google Inc. v. Better Food Choices LLCAll claims unpatentablePTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision
Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.
RulingsFinal written decision- BurdenOther
“As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22
Patent outcomesUS 5,841,115 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · NautilusPatents in suitUS 5,841,115 - Sony Computer Entertainment America LLC / Microsoft Corporation Inc. v. Adc Technology Inc.All claims unpatentablePTAB · Jul 1, 2016 · CBM2015-00026 · APJ Michael P Tierney · CBM · Final written decision
Claims 8–14 are unpatentable under §103 as obvious over the instituted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Ordinary Skill in the Art Petitioner’s declarant, Mr. Garry E. Kitchen, testifies that, based on his experience in the commercial software art, a person of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in electrical engineering, computer engineering, computer science or a related engineering discipline or equivalent experience or education. Declaration of Garry Kitchen, Ex. 1011 ¶ 33. Patent Owner does not dispute this recitation of the level of ordinary skill in the art. We adopt the level of ordinary skill in the art identified by Mr. Kitchen as it is consistent with the prior art of record. See also 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 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Petitioner provides specific constructions for each of the interference means appearing in the dependent claims. Pet. 22–24. Patent Owner disagrees that the dependent claims recitation of interference means requires “additional functional limitations piled on top of the disclosed structure.” PO Resp. 7. Specifically, Patent Owner contends that there is only one construction of interference means, namely that which Petitioner provided with respect to the interference means of claim 8. Petitioner disagrees with Patent Owner and contends that the four dependent claims themselves recite specific functions and must further limit the claim from which they depend. Reply 7. We determine that it is unnecessary to determine whether Patent Owner or Petitioner is correct as to the specific construction of the interference means recited in claims 11, 12, 13, and 14 as the claims are unpatentable under either construction. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Program, Data and Combination of Program and Data Claim 8 contains the recitation “the program, the data, and a combination of the program and data together.” Petitioner contends that the term should mean “the program and/or the data.” Pet. 28; Reply 9. Petitioner, however, contends that Patent Owner was silent as to the meaning of the term during ex parte reexamination. Pet. 29. Patent Owner generally contends that the claim recitation is definite and requires operations to be performed either on “a program, or on data, or on a combination of the program and data.” PO Resp. 8. We adopt Patent Owner’s construction (operations are performed either on “a program, or on data, or on a combination of the program and data”) as it is consistent with the plain and ordinary meaning of the term and appears to be substantially the same as Petitioner’s construction. Reply, 9–10, Ex. 1011, ¶ 54.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The obviousness-type double patenting rejection does not demonstrate that the earlier filed ’995 patent described the invention, with all its claimed limitations. First, the rejection was based on obviousness, not anticipation. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). (“One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.”). Second, the Examiner’s identification of “common subject matter” consists merely of that which appears in the preamble of challenged claim 8. Although the Examiner stated that there was no apparent reason why the present claims were not presented in the earlier application, Mr. Kitchen presents credible testimony that the clock means limitation “for keeping a predetermined time period after said executing means starts execution of the program or data processing,” did not appear in the earlier filed applications and written description support for it was added in the continuation-in-part ’784 application via new Figure 12. Ex. 1011 ¶¶ 46–47 and 49; compare Ex. 1001, Figures 1–14, with Ex. 1014, Figures 1–11. Based on the evidence of record, we credit Mr. Kitchen’s testimony as it is consistent with the evidence of record and hold that Petitioner has established that claims 8–14 are limited to the July 2, 1998, filing date of the ’784 application, which resulted in the issuance of the ’520 patent.” slip op. at 15
Patent outcomesUS 6,193,520 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,193,520 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 27, 2016 · IPR2015-00136 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1, 4, 5, 27–29, and 34 are unpatentable under § 103 over the NetApp references, with Hart added for claims 4, 5, 29, and 34.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Petitioner asserts that the level of ordinary skill is not disputed in this case and that “[t]here is no difference between customers and potential customers of NetApp and a [person of ordinary skill in the art].” Reply 6–7. Mr. Hernandez testifies that NetApp’s customers and potential customers were entities or individuals who were “interested in data storage technology, data management technology, database storage and management technology, and related technologies.” Ex. 1048 ¶ 3. As discussed above, Mr. Hernandez also testifies NetApp had more than two hundred Systems Engineers and other sales personnel during the period of 2004–2009 who distributed NetApp’s technical documents (including Neto) to “thousands” of customers and potential customers. Id. ¶ 4. Hence, the record supports Petitioner’s contention that Neto was distributed to persons interested and ordinarily skilled in the subject matter of database technology at the time of its publication. See Reply 6–7. In view of the foregoing considerations, we find that Petitioner has established, by a preponderance of the evidence, that Neto (dated April 2009) was sufficiently disseminated to persons of ordinary skill interested in database technology to be deemed “publicly accessible” at least more than one year before November 30, 2010, the earliest possible priority date of the ʼ174 patent. See Ex. 1001, (60). Petitioner has also established, by a preponderance of the evidence, that Klivansky (dated October 2004) was available to the interested public at least more than one year before the critical date. Therefore, on this record, we determine Neto and Klivansky qualify as prior art printed publications under 35 U.S.C. § 102(b). slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“PO Resp. 18–19 (quoting Ex. 2002, 2:7–12). The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”12 Ex. 2002, 2:7–9. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does 12 The first sentence also states a database block comprises “a specific number of bytes stored in the storage.” For the reasons discussed below, we find this addition is not part of the explicit definition but, rather, represents embodiments within the defined term. Patent Owner also fails to explain how to interpret this particular phrase or how it presents a material issue related to the prior art. not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’174 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are persuaded that a preponderance of evidence demonstrates that the four NetApp References are sufficiently related for purposes of this obviousness analysis. Patent Owner does not dispute that all four documents refer to NetApp products and technologies that include FlexVol, FlexClone, Snapshots, and the ONTAP operating system. See Ex. 1018 ¶¶ 35–43; PO Resp. 35–39. Even if the documents refer to various versions of those products and technologies, we are persuaded that a person of ordinary skill in the art would have been motivated to look to the teachings of the four references based on express disclosures in the references themselves. For example, the basics of NetApp storage and cloning are described by Edwards and Edwards II. Pet. 30–31 (citing Ex. 1018 ¶¶ 102–103). Although the patent discussing this cloning technology (Ex. 1005, filed April 30, 2004) was filed prior to the publication of an article (Ex. 1003, dated June 22–27, 2008) on the same topic, we are not persuaded that this time difference would deter a person of ordinary skill from combining the teachings of the two references. This is true even if the Edwards article describes updates to the cloning technology not discussed by Edwards II. And Edwards explicitly discusses the use of writable Snapshot copies in database environments to make “copies of a production database for development or test purposes.” Ex. 1003, 14. A person of ordinary skill in the art looking to implement such a solution would have looked to other NetApp publications such as Neto, which explicitly states that it “is intended for use by ‘Oracle database administrators, storage administrators, and architects implementing a backup, recovery, and cloning solution for Oracle databases running on NetApp storage’” (Pet. 30 (quoting Ex. 1004, 4)) and Klivansky, which describes its contents as being useful as “a way of understanding the full landscape of FlexClone benefits, as a refresher of specific FlexClone operations, or as a guided tutorial that filer administrators can try” (Pet. 31 (quoting Ex. 1006, 25)). Given these explicit statements, we are persuaded that a person of ordinary skill would look to combine the teachings of Klivansky with the teachings of the other references even if Klivansky, published in 2004 (Ex. 1006), discussed an older version of the cloning technology.” slip op. at 48
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“The Petition further explains that a person of ordinary skill would have found it obvious to modify NetApp’s existing SnapManager GUI (as disclosed in Neto) for Hart’s timeline GUI because they provide similar functionality of managing multiple point-in-time databases and both allow restoring files to their prior stated based on a selected point-in-time. Pet. 34–35 (citing Ex. 1018 ¶ 117–120). We find a preponderance of the evidence supports this assertion. We find persuasive Dr. Zadok’s testimony that the difference between the two references is that “Hart’s GUI used a timeline structure to display stored snapshots, whereas Neto used a list structure to display backups (snapshots), one of which could be selected for restoration by right-clicking it.” Ex. 1018 ¶ 120. And we agree that “[s]ubstituting Hart’s timeline-based GUI for selecting (typically by clicking a mouse) a point-in-time copy for Neto’s right-click based method of selection was nothing more than a simple substitution of one known method of selection with another.” Pet. at 35; see also Ex. 1007 ¶ 25 (“[I]t should be apparent that the disclosed implementations can be incorporated in, or integrated with, any electronic device that has a user interface.”). Moreover, we credit Dr. Zadok’s testimony that “Neto’s examples name the point-in-time copies based on the time they were taken and can list them alphabetically; thus, they were typically arranged in a timeline” and concludes that “[g]iven the similarities . . . it would have been obvious for a POSITA to substitute Neto’s GUI with Hart’s GUI to perform the snapshot backup, restore, and clone functions described in Neto, Edwards, Edwards II, and Klivansky.” Ex. 1018 ¶ 120. We, therefore, find a preponderance of the evidence demonstrates that a person of ordinary skill would have had reason to combine the teachings of the Edwards, Edwards II, Neto, and Klivansky with Hart. In sum, as with the independent claims, we have reviewed both parties’ arguments and supporting evidence, including the disclosure of all four references and the testimony of both Dr. Zadok and Dr. Shenoy. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, for the reasons discussed above, Petitioner has shown, by a preponderance of the evidence, that each of claims 4, 5, 29, and 34 is unpatentable under 35 U.S.C. § 103 as directed to subject matter obvious over the combination of Edwards, Edwards II, Neto, Klivansky, and Hart.” slip op. at 69
Patent outcomesUS 8,468,174 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,468,174 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 27, 2016 · IPR2015-00128 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1, 4, 5, 27–29, and 34 are unpatentable as obvious over the NetApp references, with Hart added for claims 4, 5, 29, and 34.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Petitioner asserts that the level of ordinary skill is not disputed in this case and that “[t]here is no difference between customers and potential customers of NetApp and a [person of ordinary skill in the art].” Reply 6–7. Mr. Hernandez testifies that NetApp’s customers and potential customers were entities or individuals who were “interested in data storage technology, data management technology, database storage and management technology, and related technologies.” Ex. 1048 ¶ 3. As discussed above, Mr. Hernandez also testifies NetApp had more than two hundred Systems Engineers and other sales personnel during the period of 2004–2009 who distributed NetApp’s technical documents (including Neto) to “thousands” of customers and potential customers. Id. ¶ 4. Hence, the record supports Petitioner’s contention that Neto was distributed to persons interested and ordinarily skilled in the subject matter of database technology at the time of its publication. See Reply 6–7. In view of the foregoing considerations, we find that Petitioner has established, by a preponderance of the evidence, that Neto (dated April 2009) was sufficiently disseminated to persons of ordinary skill interested in database technology to be deemed “publicly accessible” at least more than one year before November 30, 2010, the earliest possible priority date of the ʼ174 patent. See Ex. 1001, (60). Petitioner has also established, by a preponderance of the evidence, that Klivansky (dated October 2004) was available to the interested public at least more than one year before the critical date. Therefore, on this record, we determine Neto and Klivansky qualify as prior art printed publications under 35 U.S.C. § 102(b). slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Therefore, in view of the entire disclosure of the ’174 patent and the plain language of the claims, we find that the intrinsic record before us does not justify limiting the term “database block” by reading in the “metadata” limitation not found in the claims. See Liebel-Flarsheim Co., 358 F.3d at 908.” slip op. at 25
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“For example, the basics of NetApp storage and cloning are described by Edwards and Edwards II. Pet. 30–31 (citing Ex. 1018 ¶¶ 102–103). Although the patent discussing this cloning technology (Ex. 1005, filed April 30, 2004) was filed prior to the publication of an article (Ex. 1003, dated June 22–27, 2008) on the same topic, we are not persuaded that this time difference would deter a person of ordinary skill from combining the teachings of the two references. This is true even if the Edwards article describes updates to the cloning technology not discussed by Edwards II. And Edwards explicitly discusses the use of writable Snapshot copies in database environments to make “copies of a production database for development or test purposes.” Ex. 1003, 14. A person of ordinary skill in the art looking to implement such a solution would have looked to other NetApp publications such as Neto, which explicitly states that it “is intended for use by ‘Oracle database administrators, storage administrators, and architects implementing a backup, recovery, and cloning solution for Oracle databases running on NetApp storage’” (Pet. 30 (quoting Ex. 1004, 4)) and Klivansky, which describes its contents as being useful as “a way of understanding the full landscape of FlexClone benefits, as a refresher of specific FlexClone operations, or as a guided tutorial that filer administrators can try” (Pet. 31 (quoting Ex. 1006, 25)). Given these explicit statements, we are persuaded that a person of ordinary skill would look to combine the teachings of Klivansky with the teachings of the other references even if Klivansky, published in 2004 (Ex. 1006), discussed an older version of the cloning technology.” slip op. at 48
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“g. Conclusion In the Decision to Institute, we determined that Petitioner had shown a reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 25–28. We have reviewed both parties’ arguments and supporting evidence, including the disclosure of all four references and the testimony of both Dr. Zadok and Dr. Shenoy. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, for the reasons discussed above, Petitioner has shown, by a preponderance of the evidence, that each of claims 1, 27, and 28 is unpatentable under 35 U.S.C. § 103 as directed to subject matter obvious over the combination of Edwards, Edwards II, Neto, and Klivansky.” slip op. at 68
Patent outcomesUS 8,468,174 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,468,174 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 26, 2016 · IPR2015-00034 · APJ Minn Chung · IPR · Final written decision
Claims 1, 7–14, 17–19, 22, 23, 28, 40, 41, and 47–49 are unpatentable as obvious over Edwards, Patterson, and SnapManager Guide.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“6. Conclusion In summary, we find nothing in the intrinsic record, including the written description and the language of the claims, that justifies limiting the term “database block” by reading in the “metadata” or “specific number of bytes” limitations not found in the claims. Furthermore, no extrinsic evidence, including the testimony of experts, presented in this case is sufficient to overcome the plain claim language of the term “database block.” Therefore, on this record, consistent with the term as defined in the Specification, we construe “database block” to mean “a unit of data used by a database.” See Phillips, 415 F.3d at 1316 (“The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”) (citation omitted). B. Virtual Database In the Institution Decision, we preliminarily construed the term” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“IV. PRINTED PUBLICATION Petitioner asserts that SnapManager Guide is prior art “at least” under 35 U.S.C. § 102(a). Pet. 23. Patent Owner contests that SnapManager Guide is a prior art “printed publication” under § 102. PO Resp. 1‒4. We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). Initially, we note our disagreement with Patent Owner’s contention that Petitioner cannot rely upon evidence not submitted with the Petition to show that SnapManager Guide is prior art. PO Resp. 2‒4. In Patent Owner’s view, Petitioner must make out a prima facie case of unpatentability in its Petition, which includes the substantive element of SnapManager Guide being publicly accessible and prior art. Id. at 3–4. That position, however, does not account for the difference between the threshold for instituting a trial (35 U.S.C. § 314(a)) and proving unpatentability of a claim in trial (35 U.S.C. § 316(e)). As noted by our reviewing court, “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success. Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Although “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Rather, courts must take an “expansive and flexible approach” to the question of obviousness. Dome Patent L.P., 799 F.3d at 1380 (quoting KSR, 550 U.S. at 415). We find that the Petition provides ample reasons why one of ordinary skill in the art would have combined the teachings of Edwards, Patterson, and SnapManager Guide. Pet. 25–30, 35, 40–41. For example, all of the references address the same problem addressed by the ’808 patent.” slip op. at 79
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success. Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Although “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Rather, courts must take an “expansive and flexible approach” to the question of obviousness. Dome Patent L.P., 799 F.3d at 1380 (quoting KSR, 550 U.S. at 415). We find that the Petition provides ample reasons why one of ordinary skill in the art would have combined the teachings of Edwards, Patterson, and SnapManager Guide. Pet. 25–30, 35, 40–41. For example, all of the references address the same problem addressed by the ’808 patent.” slip op. at 79
Patent outcomesUS 8,150,808 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,150,808 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 13, 2016 · IPR2015-00014 · APJ Minn Chung · IPR · Final written decision
Claims 1, 4–9, 35, 46, 50, and 57 are unpatentable as obvious over Edwards, Patterson, and Sanders; claim 15 is unpatentable as obvious over those references and CaraDonna.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“IV. PRINTED PUBLICATION Patent Owner in its Response contests that Sanders is a prior art” slip op. at 46
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success. Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Although “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Rather, courts must take an “expansive and flexible approach” to the question of obviousness. Dome Patent L.P., 799 F.3d at 1380 (quoting KSR, 550 U.S. at 415).” slip op. at 78
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“we do not, and need not, consider such evidence. We have determined, as discussed above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to those additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1038, 1039, 1044–1046, 1048, 1053, 1056, 1058–1061, and 1064 is dismissed as moot. We consider Patent Owner’s motion to exclude with respect to each of the remaining exhibits below.” slip op. at 88
Patent outcomesUS 8,150,808 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,150,808 - Actifio, Inc. v. Delphix Corp.Some claims unpatentablePTAB · Apr 13, 2016 · IPR2015-00016 · APJ Minn Chung · IPR · Final written decision
Claims 2, 3, 24–26, 29, 31, 35, 36, 51, 53, 54, and 56 are unpatentable as obvious; claims 27 and 52 were not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“1152, we do not, and need not, consider such evidence. We have determined, as discussed above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to those additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1138, 1139, 1144–1146, 1148, 1153, 1156, 1158–1161, and 1165 is dismissed as moot. We consider Patent Owner’s motion to exclude with respect to each of the remaining exhibits below.” slip op. at 100
Patent outcomesUS 8,150,808 mixedNonecites Phillips · KSR · GrahamPatents in suitUS 8,150,808 - Actifio, Inc. v. Delphix Corp.All claims unpatentablePTAB · Apr 12, 2016 · IPR2015-00026 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–13, 17–29, and 33 are unpatentable as obvious over the four combinations of references identified in the decision.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“1030, 1032, 1033, 1035–1137, 1040, 1041, and 1045. Id. at 1 n.1. Of the other objected-to Exhibits, except for Exhibits 1048 and 1049, we do not, and need not, consider such evidence. We determine, for reasons set forth below, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence that rely on those additional Exhibits. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1029, 1030, 1032, 1033, 1035–1146, 1054, and 1062 is dismissed as moot.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner relies on Sarma for its data compression and other techniques, not for its teachings about virtualization and databases. Pet. 58 (citing Ex. 1018, 2:27–11). Petitioner points out that Sarma discloses the NetApp SnapMirror and ONTAP technology. Id. (citing Ex. ’026 Ex. 1018, 7:11–14; 14:16–23). Petitioner persuasively shows that Sarma’s standard compression or encryption techniques would have benefited the NetApp system described in the base references, for example, “because compression was a well-known method of increasing transmission and storage efficiency.” Id. (citing ’026 Ex. 1108 ¶¶ 183–84); see also id. at ’026 Pet. 31–33 (discussing further motivation to combine). We adopt Petitioner’s showing and determine that Petitioner has established by a preponderance of the evidence that the subject matter of claims 17 and 33 would have been obvious over Sanders, Edwards, Data ONTAP Guide, and Sarma.” slip op. at 92
Patent outcomesUS 8,161,077 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,161,077
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.