- Opensky Industries, LLC v. VLSI Technology LLCInstitution deniedPTAB · Dec 23, 2021 · IPR2021-01056 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR on claims 1–3, 5, 6, 9–11, and 13 because Petitioner likely could not produce its relied-upon expert for cross-examination.
RulingsInstitution decision- BurdenInstitution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“trial is instituted. Prelim. Reply 9. That suggestion, however, stands at odds with Dr. Singh’s agreement to work exclusively with PQA. See IPR2021-01229, Ex. 1033 (declaration describing PQA’s engagement of Dr. Singh), Ex. 1034 (engagement agreement between PQA and Dr. Singh). Petitioner submits that because Dr. Singh submitted his declaration in the Intel IPR and in the PQA IPR, “[i]t is unfathomable that a witness who submits two declarations would refuse to testify.” Prelim. Reply 10. But that argument ignores that Dr. Singh has agreed to work exclusively with PQA, which has not given any indication that it would release Dr. Singh from his agreement. Moreover, we have no evidence from Dr. Singh that he would be willing to testify here. Without some factual support to demonstrate that it reasonably expects Dr. Singh to cooperate, in light of the exclusive agreement with PQA, Petitioner’s assertion is speculation and does not demonstrate sufficiently that Dr. Singh would likely participate in this proceeding. Petitioner challenges PQA’s assertion of its exclusive agreement with Dr. Singh as “vague and ethically questionable” (id. at 9–10). This is more speculation. As noted above, PQA has produced its agreement with Dr. Singh (IPR2021-01229, Ex. 1034) and we have no basis to question the agreement’s legitimacy. Petitioner allowed this unusual situation by relying on a prior declaration by Intel’s expert, rather than retaining its own expert for a new declaration. Whether the agreement with Dr. Singh complies with ethical rules and whether it permits Dr. Singh to testify here are matters not before us. Moreover, they may present issues of contract law for the courts to decide, which may cause delay and prevent us from meeting our statutory deadlines, were we to institute a trial with the issues unresolved.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
Discretionary denialPatents in suitUS 7,523,373 - PTAB · Dec 23, 2021 · IPR2021-01064 · APJ Jason W Melvin · IPR · Institution
Instituted inter partes review of claims 1, 14, 17, 18, 21, 22, and 24 on all four asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In our view, Petitioner correctly emphasizes Fintiv’s language noting that the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. Indeed, in multiple decisions Patent Owner cites for support, the Board determined that instituting review would require resolving issues that would also have been resolved by a district court. E.g., Fitbit, Inc. v. Philips N. Am. LLC, IPR2020-00828, Paper 13, 15–16 (considering the patent owner’s litigation with a non-petitioning party that would overlap with the inter partes review at issue); Mylan Labs. Ltd. v. Janssen Pharmaceutica N.V., IPR2020-00440, Paper 17, 19–23 (same, and additionally considering litigation involving the petitioner). Here, because the Intel litigation did not resolve issues presented by this proceeding, there is no chance of an inconsistent outcome. Indeed, “redoing the work of another tribunal” would only arise when that tribunal has resolved a dispute at issue before the Board. Patent Owner has not argued that resolving a dispute in this proceeding would conflict with an aspect of the Intel litigation. Thus, we do not agree with Patent Owner that, because “the [litigation] parties and the District Court invested enormous amounts of time and money litigating validity and infringement issues relating to the ’759 patent,” instituting review here would mean redoing the work of another tribunal. Prelim. Resp. 17.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11, 9 (Apr. 2, 2019). In Valve, however, the petitioner and the prior petitioner were co-defendants accused of infringement based on the same product. Id. at 9–10. Patent Owner argues that the Board has found a relationship between petitioners when one uses substantive challenges from an earlier petition. Prelim. Resp. 21 (citing Ericsson Inc. v. Uniloc 2017 LLC, IPR2019-01550, Paper 8, 12). Ericsson imposed a relationship in light of the derivative nature of the petition at issue. Ericsson, IPR2019-01550, Paper 8, 12. That decision, however, has not been designated as precedential or informative by the Board, and other decisions have determined that factor 1 weights against discretionary denial for an independent petitioner. E.g., United Fire Protection Corp. v. Engineered Corrosion Solutions, LLC, IPR2018-00991, Paper 10 (determining that petitioner independence weighed against discretionary denial, but that substantive similarity with an unrelated prior petition meant the factor only moderately weighed against discretionary denial). We determine that factor 1 weighs somewhat against discretionary denial because Petitioner has not filed a prior petition, but did copy its substantive grounds from a prior petition. That the Board has not substantively addressed the merits of the prior petitions, in our view, weighs against discretionary denial, because that approach best balances the desires to improve patent quality and patent-system efficiency against the potential for abuse of the review process by repeated attacks on patents. See General Plastic, IPR2016-01357, Paper 19, 16–17. We view substantive consideration as an important factor in that balance, because to determine otherwise would asymmetrically insulate patent owners from potential abuse without addressing the desire to improve patent quality. Patent Owner suffers no abuse from having this tribunal consider the merits of these grounds for the first time.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The Federal Circuit held that “the Patent Office, when applying § 325(d), cannot deny institution of IPR based on abusive filing practices then grant a nearly identical reexamination request that is even more abusive.” Vivint, 14 F.4th at 1354. It found important that, when the Board denied Alarm.com’s IPR petition, the Board considered Alarm.com’s earlier petitions and reasoned that “allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress's intent in enacting the [AIA].” Id. at 1353 (quoting IPR2016-01091, Paper 11, 12) (alteration in original) (emphasis omitted). The facts here are not remotely similar. The Intel IPRs were not denied for abusive filing practices, but rather were denied to avoid overlap with a parallel district-court litigation. See IPR2020-00106, Paper 17, 4–13; IPR2020-00498, Paper 16, 4–10. This proceeding involves a different petitioner, which has not before petitioned for review of the ’759 patent. Those facts show that this Decision does not involve potentially abusive filing practices by the same challenger, as was at issue in Vivint. Patent Owner has not identified how instituting review would be inconsistent with a prior decision on this patent. As explained above, because the invalidity issues presented at trial were different from those considered in the prior application of Fintiv, we reach a different conclusion under that doctrine based on different facts here. Thus, Vivint is not germane to our decision.” slip op. at 14
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,725,759 - Niantic, Inc. v. Nant Holdings IP, LLCInstitution deniedPTAB · Dec 9, 2021 · IPR2021-01119 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim, chiefly because the cited art did not disclose tessellated tiles.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any challenged claim. We therefore do not institute inter partes review as to any of the challenged claims of the ’518 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“interest, the area tile map represented by a set of tile subareas that includes one or more tessellated tiles from a tessellated tile map” or “identify[ing] a tile subarea . . . wherein one or more tessellated tiles within the identified tile subarea are associated with one or more AR content objects.” As Patent Owner points out, there is no discussion in Altman of tessellated tiles. Prelim. Resp. 16. While it is true that Altman discusses map tiles, there is no disclosure in Altman of how those tiles are arranged, much less whether they are “tiles fitted together to cover an area without gaps.” Id. at 18–19. The portions of Altman relied on by Petitioner do not support its argument that Altman discloses tessellated tiles. Thus, for example, paragraph 37 of Altman, cited by Petitioner, mentions “map tiles” but provides no description of what they are or how they are arranged. Ex. 1003 ¶ 37. Similarly, paragraph 43 of Altman, also cited by Petitioner, describes the map tiles as “image files of maps with varying degrees of granularity,” but does not provide any description of how the tiles are arranged. Id. ¶ 43. Nor does Figure 2A of Altman or its description in the text demonstrate that Altman’s map is made up of tessellated tiles. Prelim. Resp. 17. Petitioner does not support its argument that because Altman’s Figure 2A shows “a large geographic area covering multiple towns with no gaps in map coverage” that “a person of ordinary skill would have understood that each layer or the area map as a whole . . . constitutes a tessellated tile map.” Pet. 24. As Patent Owner points out, individual map tiles can be used to display certain areas of a map without being sets of tessellated tiles. Prelim. Resp. 18. And even if individual tiles were used in Altman’s maps, nothing in Altman discloses or suggests that there are no gaps between the tiles. Id. at 18–19.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“Altman with CaveLie.” Pet. 46 (citing Zyda Decl. ¶¶ 305–311). Petitioner explains that “[a person of ordinary skill] would have naturally looked to CaveLie for further implementation details on the tessellated tiles already disclosed in Altman.” Id. at 46–47 (emphasis added). Patent Owner responds that “there is no citation to anything in these references themselves to support this argument, which is apparently based on hindsight.” Prelim. Resp. 36. We agree with Patent Owner that Petitioner has failed to demonstrate a sufficient motivation to combine Altman with CaveLie, other than hindsight. As indicated in the argument from the Petition just quoted, Petitioner’s rationale for combining Altman and CaveLie proceeds on the assumption that Altman discloses tessellated tiles, for which CaveLie allegedly provides “further implementation details.” Pet. 46–47. However, in our analysis of Altman, we conclude that Petitioner has not demonstrated sufficiently that Altman teaches or suggests tessellated tiles. See supra, Section III.B.1.c.” slip op. at 25
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the “tessellated tiles” limitations. Dr. Zyda’s testimony tracks the arguments in the Petition closely. See Zyda Decl. ¶¶ 160–162. As support for his conclusion (id. ¶ 160) that “Altman discloses that the map tiles can be tessellated tiles,” Dr. Zyda cites the same disclosures from Altman (Ex. 1003 ¶¶ 37, 43, and Fig. 2A) as does the Petition. See Pet. 23 (citing Ex. 1003 ¶¶ 37, 43). As just discussed, those disclosures do not describe how the tiles in Altman are arranged and do not support the contention that they are tessellated tiles. Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that these map tiles are tessellated tiles” cites paragraph 43 of Altman for support. See Zyda Decl. ¶ 161. For the reasons given supra, that paragraph in Altman does not support this conclusion. Moreover, Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that each layer or [sic] the area tile map [in Altman] as a whole (considering all layers collectively) constitutes a tessellated tile map” (Zyda Decl. ¶ 161) cites no supporting evidence. Our Trial Practice Guide cautions that “[e]xpert testimony . . . cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (November 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We are not persuaded by Dr. Zyda’s speculations on what persons of ordinary skill would have known (including those discussed supra) because either they are not properly supported by the cited evidence, or they do not cite any evidentiary support at all.” slip op. at 23
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,664,518 - Niantic, Inc. v. Nant Holdings IP, LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01133 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 5–11, 15, 18, 22–29, 34–36, 38, or 43 obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 of the ’051 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’051 patent.” slip op. at 2
- BurdenDenied
“While the ’051 Patent does not expressly define [“virtual element attribute”], it describes “[e]lement attributes, AR object attributes, or other attributes” as “includ[ing] myriad types of attributes” such as “location information (e.g., relative location to elements 390 of a scene, triangulation, GPS coordinates, etc.)[.]” (’051, 16:4-19.) As explained above, Yu discloses that the AR platform system obtains digital data including ambient-light information in a three-step process at steps 901-903. (Yu, ¶¶0060-0062.) A POSA would have understood that this ambient light information is a “virtual element attribute” as described in the ’051 Patent, because the indoor/outdoor data, position data for the sun, and local weather data all relate to the location of the mobile device on which the virtual element will be placed. (Zyda, ¶¶140-141.) Pet. 29–30. Petitioner’s declarant makes these same statements. See Ex. 1002 ¶¶ 140–141.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“proceeding. On the one hand, Petitioner acknowledges “[t]he parties dispute the construction of several claim terms,” and submits that it identifies such disputes in the Petition “so that the Board can be aware of them.” Pet. 10– 11. Petitioner also “respectfully submits that [such disputes] need not be expressly resolved by the Board for purposes of evaluating Petitioner’s proposed Grounds” because “the prior art would satisfy the constructions proposed by either party.” Pet. 11. But, notwithstanding 37 C.F.R. § 42.104(b)(3), Petitioner does not provide and support an express construction in the Petition for any limitation at issue in this proceeding. On the other hand, Patent Owner submits the limitation “alter[ed] presence” should be construed to mean “the degree of at least a relevant AR object’s visual presentation based on a spectrum.” Prelim. Resp. 9. Patent Owner otherwise submits, “[f]or all other terms, the plain and ordinary meaning of those terms is sufficient for the Board to analyze Petitioner’s grounds at this preliminary stage.” Id. at 10. Patent Owner also argues the Petition fails to provide required claim constructions or support therefor in violation of 37 C.F.R. § 42.104(b)(3). Id. at 13–16 (arguing Petitioner “leaves the Board and Patent Owner to guess at how the Petition has construed the claims in and what support allegedly exists for such constructions”). Regardless, as discussed below, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“with particularity, how or why a real-world attribute, namely, Yu’s ambient light information, allegedly teaches a virtual element attribute as recited in claim 1. Prelim. Resp. 21 (“[T]he Petition points only to digital data concerning real-world ‘ambient-light information’ as corresponding to the claimed ‘virtual element attribute.’”; “Yu gives no hint that virtual element attributes would play any role in an image’s rendering.”; “[Petitioner] assumes that real-world ambient light corresponds to the virtual element attribute used to ‘determine whether to alter presence of a relevant AR object.’”). Patent Owner argues “at no point does the Petition construe the term ‘virtual element attribute’ or explain how the real-world attributes of ambient light could be a ‘virtual element attribute,’” despite “the ’051 Patent specification repeatedly distinguish[ing] real-world elements and virtual elements as separate factors.” Id. at 21–22; see id. at 22 (“[The skilled artisan] would conclude that virtual elements are different from real-world elements and that virtual element attributes are the information about the virtual elements, not real-world elements.”). Patent Owner also argues Petitioner bases its premise that real-world “location” of a mobile device may be a “virtual element attribute” on a “misleading[] combin[ation]” of two partial statements in the ’051 patent. Prelim. Resp. 22–23 (referring to Petitioner’s citation to Ex. 1001, 16:4–19). Patent Owner argues, “[i]n context, these two sentences do not define ‘virtual element attribute’ to mean location information as the Petition argues,” and “would [not] lead [the skilled artisan] to conclude that real-world ambient light is a virtual element attribute merely because it ‘relate[s] to the location of the mobile device.’” Id. at 23. As noted by Patent Owner (Prelim Resp. 23), contrary to Petitioner’s above argument, the ’051 patent explicitly discloses that “the location information can pertain to or reflect the physical location of real-world elements.” Ex. 1001, 16:15–16. Patent Owner concludes, and we agree for the reasons discussed above, Petitioner “simply has not shown that it is proper to rely on the real-world quality of ambient light to fulfill the requirement for a ‘virtual element attribute’ in claims 1 and 43 of the ’051 Patent.” Prelim. Resp. 23. Indeed, neither Petitioner nor its declarant expressly construes, with citation to supporting evidence, the limitation “virtual element attribute” to include real-world attributes, or provides evidentiary support and explanation of sufficient particularity for how or why obtaining a real-world attribute like ambient light information teaches obtaining a virtual element attribute. See 35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Yu discloses the “virtual element attribute” limitation, as recited in independent claims 1 and 43.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,403,051 - Veeam Software Corp. v. Hybir Inc.Some claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision
Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76
Patent outcomesUS 8,051,043 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,051,043 - Veeam Software Corp. v. Hybir Inc.Some claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision
Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, we find that the record does not support construing” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101
Patent outcomesUS 8,051,043 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,051,043 - Veeam Software Corporation v. Hybir, Inc.All claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01040 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Field; the Board did not reach the alternative Strong and Field ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“As we noted in the Institution Decision, Patent Owner’s Preliminary Response proposed a level of ordinary skill in the art that was very similar to Petitioner’s proposal. Inst. Dec. 15 (citing Prelim. Resp. 28). On the preliminary record at that time, we found both parties’ proposals consistent with the level of ordinary skill in the art reflected by the prior art of record. Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). And, on that record, we found that one of ordinary skill in the art at the time of the invention would have “a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” Id. at 16.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner
“which states: “A method of synchronizing electronic data stored on a first client device with at least a second client device.” Ex. 1001, 19:8–9. Petitioner contends the preamble of claim 1 is not limiting because it states a purpose or intended use for the method recited and neither the term synchronizing nor the full preamble is referenced again in other claim elements. Pet. 10 (citing Arctic Cat Inc. v. GEP Power Prods, Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019)). In our Institution Decision, we preliminarily determined that the preamble of claim 1 does not limit the scope of the claim. See Inst. Dec. 18–19. Patent Owner does not contest that preliminary determination in its Response and confirmed at the oral hearing that it does not contend the preamble is limiting. See generally PO Resp.; Tr. 107:15– 16 (confirming that Patent Owner does not assert the preamble is limiting). Accordingly, for the reasons explained in our Institution Decision and because the parties agree, we maintain our preliminary determination and reaffirm that the preamble of claim 1 is not limiting, and, therefore, we need not expressly construe it.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“unclear. Nonetheless, we find that Field teaches receiving a first “inventory” for the reasons explained by Petitioner and based on our construction of “inventory” at least because Field receives an itemized list of electronic data in the form of one or more signatures. Thus, since Field teaches an “inventory,” we do not agree with Patent Owner that Field teaches away from an “inventory.” Additionally, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner, however, fails to identify, and we do not discern, any indication in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from following Field’s teachings or modifying Field as proposed by Petitioner. Further, to this latter point, we do not discern any specific argument by Patent Owner that one of ordinary skill in the art would not have been motivated to modify Field as Petitioner proposes, aside from Patent Owner’s assertions of teaching away.22 Considering the complete record before us, for the reasons explained above we find that Petitioner has established that Field teaches or suggests limitation 1A.1 and that one of ordinary skill in the art would have had a reason with rational underpinning to modify Field as proposed by Petitioner with a reasonable expectation of success.” slip op. at 54
Patent outcomesUS 9,679,146 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,679,146 - Veeam Software Corporation v. Hybir, Inc.All claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01039 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Field and Anderson; claim 5 over Field, Anderson, and Ackerman; and claim 11 over Field, Anderson, and Coombs.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Accordingly, we find that the complete record does not support” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“away and (2) whether one of ordinary skill in the art would have been motivated to modify Field in light of potential inefficiencies. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 69
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Weighing the Graham Factors On balance, considering the complete record before us, Petitioner has established by a preponderance of the evidence that the combination of Field, Anderson, and Coombs would have rendered the subject matter of claim 11 of the ’545 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 99
Patent outcomesUS 9,037,545 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,037,545 - SAP SE v. Teradata US, Inc.Institution deniedPTAB · Dec 1, 2021 · IPR2021-01017 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show the claimed file management context in non-persistent memory.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’419 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art at the time of the invention “would have possessed at least a Bachelor’s degree in computer science with at least two years of experience with database system development.” Pet. 14 (citing Ex. 1006 ¶¶ 21–22). Petitioner further contends that a person of ordinary skill in the art could have had “some combination of (1) more formal education and less technical experience, or (2) less formal education and more technical or professional experience.” Id. (citing Ex. 1006 ¶¶ 21–22). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’419 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms require explicit construction at this stage of the proceeding. Pet. 16. Patent Owner contends that in related district court litigation, Petitioner has proposed construing several terms in accordance with pre-AIA 35 U.S.C. § 112 ¶ 6, and Patent Owner faults Petitioner for not applying those constructions in the Petition. Prelim. Resp. 7–8. Based on the record before us, we need not construe any claim terms expressly to decide the issues presented at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“does not show sufficiently that the combination of System R and Lorie teaches a “file management context” stored in “non-persistent memory.” See Prelim. Resp. 16–22. As an initial matter, Petitioner asserts that the “Current Page Table and associated data structures such as free-space bit maps” comprise the claimed “file management context” in “non-persistent memory,” but Petitioner does not cite any passage in System R disclosing that the current page table (or any associated data structure) resides “in memory” rather than “on disk,” as shown in Petitioner’s annotated version of System R’s Figure 7. See Pet. 28–35. Nor does Petitioner point to any disclosure in Lorie in support of its contention that the current page table in the System R database system is stored in non-persistent memory. See id.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,904,419 - Forescout Technologies, Inc. v. Fortinet, Inc.Institution deniedPTAB · Nov 26, 2021 · IPR2021-00915 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 5–7, 9, 10, and 13–15 were obvious over either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1, 2, 5–7, 9, 10, 13–15 of U.S. Patent No. 9,948,662 B2 (Ex. 1001, “the ’662 patent”). Paper 2 (“Pet.”). Patent Owner, Fortinet, Inc., filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), which authorizes institution of an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we do not institute an inter partes review of any of the challenged claims of the ’662 patent on the grounds asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Claim 1 explicitly requires that the step of “selectively disabling . . . application of a subset of security features” be performed “by the network security device.” Petitioner, however, fails to sufficiently show that Ramsey’s firewall, the asserted “network security required by claim element 1[c]. Although Petitioner does cite to steps that are performed by Ramsey’s firewall, Petitioner does not sufficiently show that these steps perform the “selectively disabling” required by claim element 1[c]. For example, Petitioner asserts that Ramsey’s step 510 involves comparing characteristics of packet headers for those packets that may be considered trusted by firewall 225, that if the packet is trusted that it can be permitted to immediately pass through firewall 225, and that the packet is transmitted at step 5205. Pet. 19–20. Petitioner, however, does not sufficiently explain how any of these steps disable any security features. Rather, Petitioner asserts that “[s]topping IDS processing disables certain security features by ending the IDS without performing those steps for a particular transmission.” Pet. 20. Significantly, however, the steps that Petitioner identifies as stopping IDS processing all occur in the IDS, not in Ramsey’s firewall, the asserted network security device. Notably, Petitioner asserts that, as shown in the right side of Figure 5, “the IDS evaluates the firewall’s assessment in step 552 and immediately goes to ‘END’ if the packet is trusted (highlighted in blue . . . ).” Id. (emphasis added). Petitioner goes on to state that Ramsey’s “IDS 255 can determine” whether Ramsey’s firewall 225 has deemed a particular packet to be trusted and that if IDS 225 detects any of these firewall verdicts, then “then processing by the IDS stops.” Id. (citing Ex. 1003, 12:30–42; Ex 1002 ¶¶ 90–92). Thus, 5 Petitioner also relies on the same steps as satisfying the “determining . . . whether a network parameter . . . is associated with a set of trusted networks” required by claim element 1[b]. See Pet. 17–20.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no terms require express construction in order to determine whether Petitioner has met its burden to demonstrate a reasonable likelihood that any of the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the ’662 patent, the types of problems and solutions described in the ’662 patent and cited prior art, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a computer scientist with 25 years of experience and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art.” slip op. at 6
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,948,662
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.