• Juniper Networks, Inc. v. Portsmouth Network Corp.Some claims unpatentable
  PTAB · Jan 13, 2026 · IPR2024-00913 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4, 6, 7, 11, 12, 14, 16, and 17 are unpatentable over Blease, Weyman, and Hu, with some claims also over Deng; claims 8–10 and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “disclosure in Weyman (or Blease) for deactivating and activating ports, or performing certain actions in the time between such actions. Again, the only portion of Weyman cited pertains to a request to join the fabric from a processing unit having a “default” configuration, which does not relate to the timing or sequence of events in initialization. See Ex. 1006 ¶¶ 69, 156, 161–162; Ex. 1103 ¶¶ 93–94. Nor does Dr. Lavian point to any other evidence in the record supporting his conclusion that a person of ordinary skill in the art would have “ensure[d] that the processing unit is deactivated prior to being updated for use . . . and then activate[d] the processing unit after updating.” See Ex. 1103 ¶ 94. Accordingly, we give little weight to Dr. Lavian’s conclusory opinion” slip op. at 75

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “See Axonics, 73 F.4th at 957; Allied Erecting, 825 F.3d at 1381; Mouttet, 686 F.3d at 1332–33. Petitioner’s position is that, based on the teachings of Weyman, a person of ordinary skill in the art would have modified Blease’s system to distribute the functionality of control unit 44 (including its existing multicast forwarding information 48 used by OIF mapper 50). See Pet. 23–26, 38; Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1222 (Fed. Cir. 2022) (“That the proposed combination of [two references]—rather than one of the individual references—discloses the disputed claim limitations does not defeat the Board’s conclusion of obviousness. In this case, it is sufficient that a person of ordinary skill in the art would have been motivated to combine the prior art in a way such that the combination discloses the claim limitations.”).” slip op. at 55

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

    “10 In the Cisco IPR, we determined that Cisco had proven claims 8 and 18 to be unpatentable based on a different combination of references (identified as Weyman, Jain, and LeMaire), finding that limitation 8[f.ii] was taught by Jain and LeMaire. IPR2024-00506, Paper 38 at 58–77. As explained herein, we are not persuaded by Petitioner’s arguments in this proceeding that limitation 8[f.ii] is taught or suggested by Weyman. Also, in the Decision on Institution in this proceeding, the Board found that there were questions as to Petitioner’s showing for limitation 8[f.ii] and declined to reach a conclusion on whether Petitioner had shown a reasonable likelihood of prevailing on its asserted ground based on Blease and Weyman. Dec. on Inst. 43.” slip op. at 71

  Patent outcomesUS 8,014,394 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,014,394
• Cisco Systems, Inc. v. Portsmouth Network Corp.Some claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00505 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 13, 14, 16–19, 21, and 22 are unpatentable as obvious over Gai under theory 1B; claims 11, 12, 23, and 24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. at 667.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “The most common type of MAC bridge is a switch, which has multiple ports connecting it to LANs, other switches, host computing systems, or other network elements. Switches can be roughly classified as access switches or core switches. An access switch has ports that connect to LANs and/or to other network endpoints, such as user computer systems. Core switches interconnect the access switches into a Wide Area Network (WAN), by direct connection between the core switch and access switches and/or by connection to other core switches. Core switches that are directly connected to access switches are referred to herein as edge switches. Ex. 1001, col. 1, ll. 27–38. Both parties refer to this disclosure when arguing whether particular switches in the asserted prior art (Gai) qualify as an “access switch” or “edge switch.” See Pet. 5, 22, 27–28 (“edge switches are ‘[c]ore switches that are directly connected to access switches’”), 71; PO Resp. 31–32 (“The ’986 patent discloses that ‘[a]n access switch has ports that connect to LANs and/or to other network endpoints.’ . . . The ’986 patent also discloses that edge switches are ‘[c]ore switches that are directly connected to access switches.’”); Reply 20, 22. Dr. Houh and Dr. Olivier do so as well. See Ex. 1003 ¶¶ 39, 66–67, 82–83, 166, 171, 193; Ex. 2001 ¶ 80. Based on the full trial record, we agree and conclude that the descriptions of “access switch” and “edge switch” in the ’986 patent reflect what was understood to be the plain and ordinary meanings of these terms at the time of the invention. Accordingly, we interpret “access switch” to mean a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems, and interpret “edge switch” to mean a core switch that is directly connected to an access switch.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “and conclude that Petitioner has not shown sufficiently that a person of ordinary skill in the art would have been motivated to designate switch 117 as the root switch when implementing the network reconfiguration method of Gai. The only mention of an access switch connected to port 7 of switch 114 is at column 13, lines 59–63 of Gai. While that sentence establishes that such an access switch may exist in the network, it does not state or imply that it would be the root switch. Instead, when discussing the operation of the Figure 1 network, Gai only identifies switches 120 and 121 as the root switch. See Ex. 1005, col. 10, ll. 37–41, col. 11, ll. 60–64, col. 14, ll. 16–20, col. 15, ll. 27–29, 38–51, col. 16, ll. 42–45. To be sure, Gai does disclose that “execution of the spanning tree algorithm causes the switches to elect a single switch, among all the switches within each network, to be the ‘root’ switch,” where “[e]ach switch has a unique numerical identifier (switch ID) and the root is the switch having the lowest switch ID numeric value,” such that an access switch can be the root switch if it has the lowest switch ID. See Ex. 1005, col. 2, ll. 42–47, col. 10, ll. 29–36. As Patent Owner and Dr. Olivier explain in detail, though, Gai expressly cautions against doing so. Gai discloses that [d]epending on the configuration of a given network, the location of the root can significantly affect the distance that messages must travel. For example, many networks include a plurality of switches designated as access switches that provide connectivity to LANs, end stations, etc., and a plurality of backbone switches that, in turn, interconnect the various access switches. If the root is located at an access switch and the principal server utilized by the end stations (i.e., clients) is coupled to a backbone switch, the average distance between end stations and the primary server may be quite high, resulting in inefficient network operation. In addition, the backbone switches may become partitioned as ports between them are blocked. Id. at col. 3, ll. 17–29; see also id. at col. 10, ll. 26–29 (the “location of the root may affect the average distance (i.e., the average number of hops) a message travels and/or cause undesirable partitioning of backbone switches”). Thus, the location of the root is not an unimportant consideration—it affects the distance messages must travel and can cause backbone switches to be partitioned. See id. Gai, therefore, discloses that “[t]o reduce the average distance and avoid partitioning of the backbone switches, it is desirable to locate the root at a backbone switch.”10 Id. at col. 3, ll. 29–31 (emphasis added). Switch 117 in Petitioner’s modified Figure 1 is an access switch, not a backbone switch. See id. at col. 6, ll. 10–12 (“Access switches are preferably coupled to entities (e.g., LANs, end stations, etc.) whereas backbone switches provide the interconnections between access switches.”).” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “We agree with Petitioner. For purposes of claim 1, which does not recite “downstream” communication of dummy traffic (unlike claims 11, 12, 23, and 24), the only modification to Figure 1 is the addition of switch 117 and server 112e—otherwise, in Petitioner’s analysis, Gai’s method operates exactly as described when a failure occurs at root port 3 of switch 114. See Pet. 69–73, 81–85; Tr. 47:20–48:2. That modification is expressly supported by Gai, which discloses the following: Rapid reconfiguration entity 234 similarly generates one or more separate multicast messages 400 for each remaining entity directly coupled to access switch 114 (i.e., entities or end stations on LANs 102–104). In each message 400, entity 234 loads SA field 414 with the address of the corresponding entity. Each of these messages are similarly forwarded by access switch 114 through the new forwarding port (i.e., port number four). In addition, entity 234 generates and transmits one or more multicast messages 400 for entities reachable through switch 114 on ports other than its root port. For example, if port number seven at switch 114 were coupled to another access switch, entity 234 would transmit multicast messages 400 carrying the source address of entities directly coupled to this additional access switch as well. Thus, at least one multicast message 400 is generated and transmitted for each entity directly coupled to or downstream of access switch 114 (relative to the root). As set forth above, upon receipt of these multicast messages 400, the other devices within network 100 update their corresponding filtering databases with the new destination ports, as necessary. Ex. 1005, col. 13, l. 50–col. 14, l. 3 (emphasis added). Gai thus expressly contemplates the addition of “another access switch” coupled to port 7 of switch 114. Switch 117 in the modified Figure 1 is such a switch. See PO Resp. 30 (Patent Owner arguing that “a [person of ordinary skill in the art] would understand that switch 117 is an access switch”); Ex. 1018, 84:14–85:9 (Dr. Olivier agreeing that switch 117 is an “access switch”). And because an “access switch” has “ports that connect to LANs and/or to other network endpoints, such as user computer systems,” and the above disclosure mentions “entities directly coupled to th[e] additional access switch,” switch 117 would be directly connected to a device like server 112e as well. See Ex. 1001, col. 1, ll. 31–33; Ex. 1005, col. 13, ll. 59–63; supra Section II.B. We credit Dr. Houh’s testimony that Gai in its written description expressly discloses the particular “variation of the topology” of Figure 1 that Petitioner asserts. See Ex. 1003 ¶ 165. Third, Patent Owner argues that Petitioner has not established that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Gai to meet the claims.” PO Resp. 14–16 (citing Ex. 2001 ¶¶ 47–49). Patent Owner’s arguments are primarily directed to Petitioner’s asserted modification for its “1A” theory. See id. To the extent Patent Owner’s arguments apply to claim 1 and “1B,” we disagree, as Gai expressly describes the asserted modification to Figure 1 (i.e., adding an access switch connected to port 7 of switch 114). Thus, we are persuaded that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the method of claim 1 based on Gai’s full disclosure.” slip op. at 33

  Patent outcomesUS 6,917,986 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,917,986
• Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Some claims unpatentable
  PTAB · May 14, 2025 · IPR2024-00156 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–3 and 8 are unpatentable over the stated obviousness grounds; claims 4–6 were not shown unpatentable because Hiroyuki does not teach the claimed terminal pins.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes amendments to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application filed before March 16, 2013, we apply pre-AIA law. See Pet. 2; Ex. 1001, codes (22), (30). 2 US 2009/0021955 A1, published January 22, 2009 (Ex. 1004, codes (10), (43)) (“Kuang”). Petitioner contends that Kuang is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. 3 US 2012/0050606 A1, published March 1, 2012 (Ex. 1005, codes (10), (43)) (“Debevec”). Petitioner asserts that “[b]ecause Debevec was filed prior to the priority date of the ’546 patent, it qualifies as prior art at least under pre-AIA 35 U.S.C. § 102(e).” Pet. 2. 4 US 6,774,584 B2, issued August 10, 2004 (Ex. 1008, codes (10), (45)) (“Lys”). Petitioner contends that Lys is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2–3. 5 JP2006-228529, published August 31, 2006 (Ex. 1006, code (43)) (“Hiroyuki”). We refer herein to the certified English translation filed as Exhibit 1007. Petitioner contends that Hiroyuki is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). Patent Owner applies Petitioner’s asserted level of ordinary skill in the art. PO Resp. 7–8. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’546 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “The parties also dispute the interpretation of the term “synchronous signals” recited in claim 1, with the parties proposing these respective constructions: Petitioner’s Proposed Patent Owner’s Proposed Construction Construction “signals that are sent to the slave “signals related to activities governed by synchronized timing” nodes to control their corresponding LED strings at the same time.”” slip op. at 20

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

    “The “context” is typically evaluated by reviewing the intrinsic record. See e.g., Regeneron, 130 F.4th at 1380–84. Here, as discussed above, the ’546 patent has multiple disclosures where a curtain lamp has a single light-emitting diode in one light-emitting diode string. See Ex. 1001, 1:33–36, 6:15–20, 6:27–40, 8:25–45. In particular, the ’546 patent similarly discloses a first curtain lamp with one LED in one light string, as well as a second curtain lamp, which provides further support for Petitioner’s proposed interpretation. Id. at 8:25–45. Although Patent Owner argues that Figures 7 and 8 disclose multiple LEDs and light strings in curtain lamps, other embodiments and claims explicitly indicate single components in a “curtain lamp.” “[T]here is a strong presumption against a claim construction that excludes a disclosed embodiment.” See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Given that certain embodiments and claim 8 disclose a curtain lamp with one light string with one LED, we decline to interpret the claim to prohibit Petitioner’s interpretation. Additionally, we do not find that Petitioner’s claim interpretation renders the claim terms nonsensical or illogical. See Becton, 616 F.3d at 1255. Patent Owner asserts otherwise, arguing that Petitioner’s interpretation is based upon a “nonsensical” or “absurd[]” argument, there is no reason to have both a master and slave control unit to operate a single LED, and the interpretation renders most of the components superfluous. See PO Sur-reply 12; PO Resp. Supp. Br. 5. As discussed above, however, although the ’546 patent does not appear to provide any explanation for why there are master and slave control units to operate a single LED, the patent nevertheless discloses that in embodiments. This situation is also distinguishable from Becton, where “unequivocal language” of the claim recited “spring means ‘connected to’ the hinged arm,” such that interpreting the spring means and the hinged arm as the same structure would have rendered the claim nonsensical. Becton, 616 F.3d at 1254–55. Becton further found that interpreting the spring means and hinged arm as the same structure would be inconsistent with descriptions of the elements in the specification. Id. Here, in contrast, the ’546 patent Specification is replete with disclosures of a curtain lamp having one light string with one LED, and claim 8 is directed to the same. Accordingly, we adopt Petitioner’s interpretation of these claim elements.” slip op. at 36

  • Strike new argumentNew argument consideredDecided for petitioner

    “Although Patent Owner argues that Petitioner’s arguments in the Reply on “light strings” and “curtain lamp” as they relate to a single LED are improper, we do not agree. As Patent Owner acknowledges, the Petition and Dr. Schubert’s original declaration stated that a “curtain lamp” is “commonly understood to be one or more light strings.” See PO Sur-reply 12; see also Pet. 8; Ex. 1003 ¶ 37. Patent Owner did not contest Petitioner’s interpretation in its Response. See PO Resp. 15. Patent Owner did, however, argue that Kuang did not teach or suggest “light strings” in any form and therefore did not teach a “curtain lamp” under Petitioner’s definition of the same. PO Resp. 15–17. A petitioner reply may respond to arguments raised in a patent owner’s response under 35 U.S.C. § 42.23(b), and here Petitioner’s argument that a light string may have a single LED is properly presented in its Reply in response to Patent Owner’s arguments. Further, Patent Owner was not only aware that Petitioner had taken the position that a “curtain lamp” could be a single “light string,” but Patent Owner also did not dispute Petitioner’s interpretation.8 Our view, therefore, is that Petitioner’s argument that a curtain lamp may be a single LED is proper because it is corollary to Petitioner’s reply arguments on light strings. That is, Petitioner’s assertion follows from the reply arguments on light strings and the unopposed interpretation of curtain lamp as a single light string. Additionally, to the extent there could be any prejudice to Patent Owner by these light string and curtain lamp arguments, Patent Owner has had opportunities to address them by supplemental briefing.” slip op. at 32

  Patent outcomesUS 8,884,546 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,884,546
• Juniper Networks, Inc. v. Monarch Networking Solutions LLCSome claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00175 · APJ Norman H Beamer · IPR · Final written decision

  Claims 7, 9–11, 13, 14, 16, and 17 are unpatentable as obvious over Biswas and Kumar; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 14 (citing Ex. 1003 ¶¶ 62–64). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 8–9. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

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

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 14; PO Resp. 15. We have not been presented with the need to construe any claim terms for this Decision. D.” slip op. at 11

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

    “We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. We are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Ex. 1003 ¶¶ 77, 97–101. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Biswas and Kumar.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “This disclosure is inconsistent with any suggestion that the Fangman system, when routing a telephone call to its destination, identifies the private IP address of the destination telephone by determining the port range to which the port number of the destination telephone belongs. When Fangman describes the NAPPT process, it does not indicate that port ranges are used, but rather repeatedly states that port numbers are used: The [service gateway] receives a data packet from the IP device, including a public destination IP address . . . a destination port number . . . and source information, NAPPTs the data packet, using the [public destination IP address] and the [destination port number] to identify the [IP telephone] . . . . Ex. 1024, code (57). Performing NAPPT on the data packet received from the destination may include using the public destination IP address and the destination port number to uniquely identify the IP telephone, and changing the public destination IP address to a private source IP address of the IP telephone while leaving the destination port number unchanged. Ex. 1024, 4:28–33. The SG 170 may maintain a table of semi-permanent mappings of the external IP address and ports to the internal hosts and ports. Ex. 1024, 8:49–51.” slip op. at 33

  Patent outcomesUS 8,693,369 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,369
• Whatfix Inc. v. Walkme Ltd.Some claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01368 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–8, 12, 13, 16, 19–23, 26, 29, and 31 are unpatentable over Symons and Williams; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] and automation processes. Alternatively, a POSITA would have five to six years of experience working on NLP and automation processes.” Pet. 5–6 (citing Ex. 1003 ¶¶ 50–52). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’664 patent. Dec. 12.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “We interpret claims using the same claim construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). However, “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, and “[i]n such cases, the inventor’s lexicography governs.” Id. at 1316. A patentee may “choose to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term that could differ in scope from that which would be afforded by its ordinary meaning.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). We only need to construe the claims to the extent necessary to resolve the parties’ disputes. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 18

  • ExcludeGranted in part

    “Exhibits 2015–2017 are three comments made on the Internet in association with the Symons Article. These comments are also shown in Exhibit 2005. According to our rules, “[s]upplemental evidence is not filed at the time of the objection, but simply served, and is filed only in support of an opposition to a motion to exclude.” CTPG14 79 (citing 37 C.F.R. §§ 42.64(a), 42.64(b)(2)). Because no motion to exclude was filed by Petitioner, we agree with Petitioner that Patent Owner improperly filed Exhibits 2014–2017. However, as described above, the comments in Exhibit 2015–2017 are already part of the record in Exhibit 2005, and Petitioner has not filed a motion to expunge Exhibit 2005. Therefore, we are not aware of any harm to Petitioner by leaving these Exhibits in the record, as the information is 14 PTAB Consolidated Trial Practice Guide, November 2019 (the “CTPG”), available at: https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. already there. See Tr. 100:8–14. Moreover, retaining these Exhibits in the record will avoid confusion in the record and serve the public interest in a full and complete record. Accordingly, we will expunge only Exhibit 2018, as agreed by the parties, and waive the requirements of 37 C.F.R. § 42.64(b)(2) to the extent necessary to retain entry of Exhibits 2014–2017.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We need not determine whether Symons alone teaches this limitation, because we are persuaded that Petitioner has sufficiently shown that the combination of Symons and Williams teaches this limitation. We agree with Petitioner that, by disclosing that “chatbots can engage in natural language dialog with the caller and discern, through a series of interactions, the nature of the call[,] . . .capture information required to further handle the request . . [and] then trigger a robot, passing the required information to the robot to complete the request,” Williams teaches “determining . . . an automation process,” as recited in limitation 1[c]. See Pet. 19 (citing Ex. 1011, 3) (some emphasis omitted); see Ex. 1003 ¶ 95. We disagree with Patent Owner’s arguments that the combination is “ill-defined.” Sur-reply 8–9. Petitioner argues that the combination of Symons and Williams “results in a chatbot-RPA bot system capable of handling a user request for automated email signature generation along with other requests, such as automated generation of an electronic letterhead or an electronic invoice.” Pet. 20 (citing Ex. 1003 ¶ 98). In other words, in addition to the capability of handling the automated email signature generation (as taught in Symons), the combined chatbot-RPA bot system can handle other requests as well (as taught in Williams). Further, we agree with Petitioner that “[t]he ability to handle multiple requests would expand the capabilities and flexibilities of the chatbot-RPA bot” as well as “improv[e] costs, time, and capabilities.” Id. at 19–20 (citing Ex. 1003 ¶¶ 95, 96, 99). Both Symons and Williams support this argument. Ex. 1011, 2 (stating that RPA “support[s] repetitive, labor-intensive and transactional business processes,” that “software robots [are] an attractive way to drive operational cost reduction,” and that “[a]utomation through RPA can offer a return on investment (ROI) often ranging between 30 and 50 percent”); id. at 5 (stating that “[d]eployment of these cognitive tools promises new levels of productivity and innovation–freeing human workers to focus on higher-value activities and bringing industrial-level quality, consistency and auditability to business processes”); Ex. 1004, 2 (stating that “combining [RPA bots and chatbots] to automate processes can tremendously boost productivity in multiple organizations” and that “[RPA bots] reduce[] costs and human efforts”). Patent Owner’s argument that “[n]either Symons nor Williams suggest using a single chatbot-RPA to handle multiple requests at once in the same conversation thread” (PO Resp. 38) is not commensurate with the claim language, which does not require a single automation process (e.g., chatbot-RPA) to handle multiple inputs (e.g., multiple requests in the same conversation thread). See Reply 9–10. Regardless, however, we are not persuaded that Williams does not suggest using a single chatbot-RPA to handle multiple requests, as argued by Patent Owner. Sur-reply 9; see Ex. 1011, 2 (stating, for example, that “[t]he most common processes enabled by RPA today include back-office administrative processes and workflow within IT, finance, procurement, and human resources functions” and that “RPA enlists software robots to perform complex, nested routines that cut across multiple applications and interact with these systems”); id. at 3 (“Through several scripted questions, the virtual agent can surmise that the supplier is asking for status on their payment and, thus, trigger an RPA robot to access the appropriate enterprise resource planning (ERP) backend system, validate the caller’s details, retrieve necessary information, and provide status back in real-time to the supplier.”).” slip op. at 35

  Patent outcomesUS 10,819,664 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,819,664
• Meta Platforms, Inc. v. Eight KHZ, LLCSome claims unpatentable
  PTAB · Jan 7, 2025 · IPR2023-01003 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 3, 6, 15, 16, and 19 are unpatentable; claims 2, 8–10, 12, 14, 17, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “1. “Call” Terms (Claims 1, 8, and 15) The parties, and their respective experts, agree that “telephone call” (claim 1), “electronic call” (claim 8), and “electronic phone call” (claim 15) should be interpreted to mean “voice communication over an electronic network between at least two parties,” which was Patent Owner’s proposal in the district court case. See Pet. 16, 19 n.8, 58 (citing Ex. 1027, 9);1 Ex. 1003 ¶ 82; Ex. 2011 ¶¶ 51–53; Ex. 2016, 176:10–177:6 (Dr. Kyriakakis agreeing that “there is live voice exchange during a telephone call” (in addition to “background noise”)), 180:22–181:11 (same). Based on our review of the ’090 patent, we agree as well and adopt that interpretation for purposes of this Decision. See, e.g., Ex. 1001, col. 3, l. 1–col. 5, l. 44 (“Consider an example in which a listener sits at his kitchen table and has an electronic telephone call with his mother.”), Fig. 1. 1 When citing non-patent references, we refer to page numbers added by Petitioner in the bottom-right corner of the exhibit. Listening Person” (Claim 1) and “Sound Localization Point . . . Away From and Proximate to the First Person” (Claim 15) a) Procedural History As explained above, the parties did not propose any express interpretations in their Petition and Response. See Pet. 15; PO Resp. 3. Patent Owner argued, however, that “Petitioner and Dr. Kyriakakis misapprehend the scope and meaning of the [c]hallenged [c]laims.” PO Resp. 35–49. For example, Patent Owner argued that they “mischaracterize [c]laim 1’s scope as exclusively directed at binaural recording (but not binaural synthesis),” claim 8 “inherently us[es] binaural synthesis and HRTF processing,” and “binaural synthesis methods must be employed” for claim 15. Id. at 36, 46, 48–49 (emphasis omitted). In its Reply, Petitioner characterized the dispute between the parties as pertaining to the phrase “away from and proximate to,” where Petitioner proposed an interpretation of “a distance from” and Patent Owner allegedly was proposing “externalization of sound through HRTFs and [6 degree of freedom (6DOF)] tracking of the listener relative to the SLP that represents the talker.” Reply 2–12. Patent Owner responded in its Sur-Reply by stating that Petitioner “mischaracterizes” Patent Owner’s arguments, Petitioner “disputes constructions that [Patent Owner] never proposed,” and Petitioner’s focus on certain claim language for which Patent Owner “never proposed construction” was “misplaced.” Sur-Reply 1–2, 11. Patent Owner agreed, though, that the parties’ disagreement was “whether the claims require HRTF processing and whether [the] prior art teaches such processing.” Id. at 5; see Tr. 49:19–21 (Patent Owner agreeing that the dispute is “whether the claims require . . . processing with HRTFs”). dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 15

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

    “Petitioner relies on its earlier arguments regarding claim 17. Pet. 41; see Ex. 1003 ¶ 184 (citing earlier analysis of Bedingfield). Petitioner further contends that a person of ordinary skill in the art “would have been motivated to apply Ballas’s wearable frame with head tracking and HRTF processing to Bedingfield-Andrea’s headphones” to “provide[] a more realistic virtual experience,” but does not make any argument that Ballas teaches changing an ITD. Pet. 39–43; see Ex. 1003 ¶¶ 175–191. For the reasons explained above, we are not persuaded that Bedingfield teaches changing an ITD. See supra Section II.D.6. Accordingly, Petitioner has not proven, by a preponderance of the evidence, that claim 18 would have been obvious based on Bedingfield, Andrea, and Ballas under 35 U.S.C. § 103.” slip op. at 61

  • Strike new argumentNew argument consideredDenied

    “exceptional remedy of striking sentences in the Sur-Reply. Patent Owner filed the deposition transcripts of Dr. Welch and Dr. Roginska “only for the limited purpose of allowing the Board to understand the context of the cross-examination” and “does not rely on the[] [e]xhibits for any substantive argument in [the] Sur-Reply.” Sur-Reply v–vi. Patent Owner does not cite Exhibits 2029 and 2030 themselves in its Sur-Reply; it only cites Dr. Kyriakakis’s deposition transcript in this proceeding. Id. We agree with Patent Owner that its arguments in the Sur-Reply are properly responsive to the Reply because they address Dr. Kyriakakis’s cross-examination testimony where he was questioned about the opinions in his reply declaration (but we do not agree with Patent Owner’s claim interpretation arguments on the merits, for the reasons explained above). See Mot. to Strike Opp. 3; supra Section II.B.2.e. We also agree, under the particular factual circumstances presented, that filing Exhibits 2029 and 2030 was proper so the Board has the full context in which to evaluate Dr. Kyriakakis’s cross-examination testimony. Petitioner’s Motion to Strike is denied.” slip op. at 79

  Patent outcomesUS 9,226,090 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,226,090
• Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCSome claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01023 · APJ Lynne H Browne · IPR · Final written decision

  Claims 1, 3–9, and 11–14 are unpatentable under §103; claims 2, 10, and 17–20 were not shown unpatentable under either asserted ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “research experience in virtual/augmented reality, including visual and audio modeling and rendering” and that “[a]dditional education can compensate for less experience, and vice-versa.” Pet. 4–5 (citing Ex. 1003 ¶¶ 32–37). “Patent Owner accepts Petitioner’s definition of [a POSITA].” PO Resp. 2. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “Petitioner asserts that “[t]he challenged claims are unpatentable under any reasonable construction, including their plain meaning.” Pet. 5. We understand Petitioner’s position to be that no claim construction is required. See id. Patent Owner contends “that ‘no express constructions of the claims are necessary.’” PO Resp. 2 (citing Dec. 10). We agree with the parties that no claim terms require express construction. See Vivid Techs. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8

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

    “preponderance of the evidence that the combined teachings of Pedrotti, Jang, and Begault disclose or suggest “highlighting, while the user is located in the zone and with a display of the WED, one of the multiple SLPs in the zone when the PED held in the hand of the user is pointed at one of the multiple SLPs in the zone” as required by claim 1. Even if we assume (without deciding) that Pedrotti’s virtual fence is an SLP, we agree with Patent Owner that Pedrotti’s virtual fence is “at the boundary” of its “safe area” (i.e., zone), not “in the zone” as required by limitation 1[c]. PO Sur-reply 4; Ex. 1005, 11:66–12:15. In other words, the virtual fence “defines the zone itself and thus is not in the zone” as the claim requires. PO Sur-reply 4. Petitioner has not addressed this difference between what is claimed and what is disclosed by Pedrotti or explained why the combined teachings of Pedrotti, Jang, and Begault would have rendered placement of the virtual fence “in the zone” obvious to one of ordinary skill in the art. We further agree with Patent Owner that Petitioner has not adequately demonstrated that it would have been obvious for highlighting to occur in response to the user pointing a PED at the virtual fence (or any other virtual image). Rather, Petitioner repeatedly asserts that a person of ordinary skill in the art would have understood that Pedrotti’s system could have used highlighting when the PED is pointed at one of the SLPs, without pointing to sufficient basis in Pedrotti’s disclosure or explaining why one of ordinary skill in the art would have been motivated to implement highlighting in the manner claimed. Pet. 20–22. Dr. Welch similarly testifies, without sufficient support in Pedrotti, regarding what a person of ordinary skill in the art “could” have done. See, e.g., Ex. 1003 ¶¶ 268–272, 275–276. Such reasoning is inadequate to demonstrate obviousness because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also makes a number of new arguments in its Reply that a person of ordinary skill in the art “would have used Pedrotti’s system to highlight other SLPs, such as Pedrotti’s virtual ‘weapon[s],’” relying in part on “additional references.” Reply 6–10. Petitioner, however, only briefly referenced virtual sword 802 in its Petition and did not advocate the same theories for limitation 1[c] in its Petition. See Pet. 13 (mentioning a “virtual weapon” in connection with limitation 1[a]), 19–20; Tr. 53:17–55:1. Accordingly, these arguments in the Reply are improper new arguments, which we do not consider. See 37 C.F.R. § 42.23(b) (“[a] reply may only respond to arguments raised in the corresponding . . . patent owner response”); Patent Trial and Appeal Board Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“CTPG”) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.”); Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not err in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not err in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 19

  Patent outcomesUS 10,798,509 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,798,509
• Halliburton Energy Services, Inc. v. U.S. Well Services, LLCSome claims unpatentable
  PTAB · Aug 12, 2024 · IPR2023-00558 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–12 and 14 are unpatentable; claims 13, 15, and 16 were not shown unpatentable, because the asserted obviousness grounds did not establish all their limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “deliver a true 2500 hp directly to each pump 22.” Ex. 1005 ¶ 49 (emphasis added). Dr. Durham provides no persuasive explanation for his bare conclusion that a person of ordinary skill in the art would have understood from this disclosure that Coli’s motor has a maximum continuous power output of about 1750 brake horsepower or more. See Ex. 1002 ¶ 203. In particular, he does not discuss how Coli’s described “true 2500 hp” informs a person of ordinary skill in the art that Coli’s motor might be capable of outputting 1750 horsepower or more for any particular minimum amount of time. See id. Thus, on the record presented, Petitioner has not established paragraph 49 of Coli describes a motor that satisfies the requirement of claim 15.” slip op. at 69

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “(iv) Conclusion We conclude Loucks is analogous art to the ’870 patent, because it is” slip op. at 94

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

    “system, that is outweighed by the cooling functionality achieved by the addition of those components. See In re Urbanski, 809 F.3d 1237, 1243–44 (Fed. Cir. 2016) (persons of ordinary skill in the art may be motivated to pursue desirable properties of one prior art reference, even at the expense of foregoing a benefit taught by another prior art reference). Dr. Nikolaou testifies that “implement[ing] a cooling system, like the one in Loucks, in Coli’s fracturing operations . . . would require a larger on-site footprint and increased infrastructure . . . similar to the one that Coli specifically warns against.” Ex. 2002 ¶ 95 (citing Ex. 1005 ¶ 39). However, he does not provide any supporting explanation for that conclusion. See id. We find that the heat sink, thermal sensors, and microprocessor of Petitioner’s combination represents far less infrastructure and footprint within Coli’s system than the diesel power machinery (transmission, torque converter, clutch, drive shaft, and hydraulic system) rendered useless by Coli’s conversion to electric power. See Ex. 1005 ¶ 39.” slip op. at 107

  Patent outcomesUS 11,136,870 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,136,870
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only 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

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

    “We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32

  Patent outcomesUS 9,094,525 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,525
• Unified Patents, LLC v. Dynapass IP Holdings LLCSome claims unpatentable
  PTAB · Jul 12, 2024 · IPR2023-01331 · APJ Lynne H Browne · IPR · Final written decision

  Claim 5 is unpatentable over Veneklase and Jonsson; claims 1, 3, 4, and 6 were not shown unpatentable over Kew and Sormunen.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that it is too late for Petitioner to file a copy of the infringement contentions and argue that Patent Owner’s position in this Proceeding is inconsistent with its position in that proceeding. Petitioner had ample opportunity to raise its arguments about the infringement contentions well before the oral hearing. PO Resp. to Supp. 2. Patent Owner complied with our mandatory notice provision. Further, we agree with Patent Owner that its position in the infringement contentions is not inconsistent with its position in this proceeding. Paper 3, 1. For these reasons, we decline to exercise our authority under 37 C.F.R. § 42.5(b) to consider the infringement contentions and the new arguments during an oral hearing.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA6”) “for the ’658 Patent would have had at least (1) an undergraduate degree in electrical and computer engineering or a closely related field; and (2) two or more years of experience in security. EX1001, generally; EX1003, ¶¶49-51.” Pet. 5. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. Based on the record presented, including our review of the ’658 Patent and the types of problems and solutions described in the patent and the cited prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 12

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

    “Applicant’s foregoing computer security embodiment, utilizes two distinct communications channels and a random number generator in order to ensure that an authorized user of a computer system is notified that someone or something is seeking access to the computer system with his or her password. Moreover, Applicant’s foregoing invention is very cost effective as it employs substantially “off the shelf” and readily available components. Further, the use of a “secret” password, a “secret” substantially random number, and a “secret” second channel allows for multiple levels of security before access to the computer system is achieved and provides enhanced security over the prior art. Ex. 1005, 7:16–28. We do not agree with Patent Owner that these statements unequivocally support its position that Veneklase’s two-step authentication process is a principle of operation of its system. Rather, the quoted statements indicate that Veneklase’s use of two distinct communication channels and a random number generator are key features of Veneklase’s system that provide multiple levels of security and enhance security of that system. As modified Veneklase’s system still uses two distinct communication channels and a random number generator. Thus, to the extent that Veneklase’s enhanced security measures (i.e. two distinct communication channels and a random number generator) are a principle of operation of Veneklase’s system, the proposed modification does not destroy this principle of operation or render Veneklase’s system inoperable. Moreover, incorporating Jonsson’s teachings related to using an algorithm to create a new password would not destroy the principle of operation of Veneklase’s security system because it only changes how Veneklase accomplishes its goal of preventing unauthorized access to a computer system, rather than defeating its goal of preventing such access. See In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012). Further, we do not agree that Plas-Pak (a routine decision11) supports Patent Owner’s contention that the proposed combination impermissibly changes Veneklase’s principle of operation as Patent Owner has not identified differences between the two authentication processes that would be “unlikely to motivate a person of ordinary skill to pursue” the proposed combination. Plas-Plak, 600 F. App'x at 757-59.” slip op. at 25

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

    “motivation to combine Veneklase and Johnson. PO Resp. 20–21. Petitioner does not propose modifying Veneklase to include Jonsson’s teachings solely because the security of the proposed combination is superior to the security in Veneklase. Rather, Petitioner asserts that “[a] POSITA would have been motivated to make such a combination because having only the one password transmitted via the computer system is more efficient and secure.” Pet. 31 (citing Ex. 1003 ¶ 91). The Petition explains how the combination is more efficient in that it requires only a single step which reduces the amount of time required for the authentication process. Id. We also agree with Petitioner’s reasoning that a person of ordinary skill in the art would have been “motivated to combine Veneklase and 11 “A routine decision is binding in the case in which it is made, even if it is not designated as precedential or informative, but it is not otherwise binding authority.” Patent Trial and Appeal Board, Standard Operating Procedure 2 (Rev. 11) 2 (July 24, 2023), available at https://www.uspto.gov/sites/default/files/documents/20230724_ptab_sop2_r ev11_.pdf. Jonsson because the combination merely uses a known technique to improve similar devices in the same way.” Pet. 33 (citing KSR, 550 U.S. at 401). Jonsson discloses a known algorithm and Veneklase discloses a system that is similar to Jonsson’s. In the absence of any evidence that applying Jonsson’s algorithm to Veneklase’s system is beyond the skill of a person of ordinary skill in the art, we agree that “the improvement is [no] more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 401.” slip op. at 26

  Patent outcomesUS 6,993,658 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,993,658

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.