- Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentablePTAB · Jul 1, 2025 · IPR2024-00287 · APJ Norman H Beamer · IPR · Final written decision
Claims 9–12, 14–16, and 22–24 are unpatentable under § 103 over Riepling and Meisels, or Riepling, Manzano, and Meisels; claim 13 was disclaimed.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. We apply Petitioner’s articulation.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “representation of the at least one file.” Petitioner is correct that a representation of a file is not the file itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ʼ906 application, illustrated in the portion of Figure 6B reproduced below (highlighted here for purposes of explanation). This portion of Figure 6B depicts representations of two files: “FamilyHistory.docx” and “XmasLetter-2012.pdf.” The ’906 application specifically states: [A] located data resources dialog UI element 630b . . . includes a presentation space 632b for presenting a user detectable representation of some or all of the data objects identified in the received data object identification response from . . . second node 504. Ex. 2004 ¶ 147 (emphasis added). The entries in the above figure are representations of the files, not the files themselves. The actual files are stored in the file system storage associated with the user’s node, and only retrieved if the user selects the “Access” or “Access All” elements. Id. ¶ 148. Patent Owner misconstrues the claim 22 language, “a first representation of the at least one file, in a location among one or more folders, that is stored at the at least one server” and “a second representation of the at least one file, in a location among one or more folders, that is stored at the first node.” Patent Owner infers from this language that the representation is itself a file that is “in a location among one or more folders” and is stored on a server or at a node. PO Resp. 17. Not so — the representation of a file, such as “FamilyHistory.docx” in the above figure, is not stored at a server or node, but rather is simply displayed on a screen. As the ’906 application states: A representation of a program entity may be stored and/or otherwise maintained in a presentation space. As used in this document, the term “presentation space” refers to a storage region allocated and/or otherwise provided for storing presentation information . . . . A screen of a display, for example, is a presentation space.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“because (i) Riepling and Meisels are from the same field of endeavor, directed to sharing files over a network; (ii) the combination would have yielded expected, predictable results, using known and routine computer programming principles, to modify Riepling’s system to generate an electronic message that includes a link pointing to an uploaded file; (iii) the combination would have been readily implemented given Meisels’ teachings of inserting, in an electronic message, a link to a shared location where a file is uploaded; and (iv) the combination was suggested because Meisels expressly disclosed a benefit of sending an email message with a link, to avoid multiple copies of a file from existing at multiple locations, and sending links to one file to multiple recipients and managing permissions on an individual recipient basis. Pet. 67–70 (citing Ex. 1107, Fig. 1, ¶¶ 2, 4, 19; Ex. 1108, Fig. 4, ¶¶ 1, 3, 41–45, 56; Mowry Decl. ¶¶ 194–198). In addition, for reasons similar to the motivation basis, Petitioner argues that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination. Id. at 70–71 (citing Mowry Decl. ¶¶ 199–200). Other than its arguments directed to ’520 claim requirement 9[l], discussed below in Section III.D.4.d), Patent Owner does not further address Petitioner’s arguments regarding the combination of Riepling and Meisels. As discussed in that section, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. 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 Riepling and Meisels in the manner argued by Petitioner.” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner that set content field 325 of Riepling teaches or suggests claim requirement 9[b]. As Petitioner’s expert explains, the fact that field 325 has an appearance identical to that of fields 321–324 in Figure 3, which fields are specifically stated to be “text field[s],” strongly suggests that field 325 is also a text field. Mowry Decl. ¶ 70; see also Reply 10–11. Patent Owner’s suggestion that field 325 could be a dropdown list or other type of field is contradicted by the fact that it does not show the typical dropdown arrow associated with a dropdown box, or other typical non-textbox appearance such as the checkbox appearance of field 320. Moreover, in the example of Figure 3, the “Set Content” entry is “audio,” which is a file description. Reply 10. The fact that “JPEG” is checked in field 320 is not inconsistent with the “audio” entry in field 325, given that, as Riepling explains, “it may be possible for audio files such as MP3 files to contain non-MP3 data, such as JPEG data embedded within the MP3 files.” Id. at 11 (citing Ex. 1107 ¶ 32; Mowry 2nd Decl. ¶ ¶ 101–104). Also, there is no reason why the Figure 5 response that gives the uploader the ability to provide additional description of the file being uploaded is inconsistent with the ability of the requester first describing what type of file is being requested via field 325 in Figure 3. Id. at 11–12. Accordingly, for the reasons discussed above, we are persuaded that the record supports Petitioner’s arguments regarding claim requirement 9[b].” slip op. at 37
Patent outcomesUS 11,611,520 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,611,520 - Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentablePTAB · Jun 30, 2025 · IPR2024-00286 · APJ Norman H Beamer · IPR · Final written decision
Claims 17–21 are unpatentable under § 103 over Houston and Garcia; the Board did not reach the alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We conclude that there is no basis for Patent Owner’s proposed construction of “representation of the at least one folder.” Petitioner is correct that a representation of a folder is not the folder itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ’635 application, illustrated in the portion of Figure 6D reproduced below (highlighted here for purposes of explanation). This portion of Figure 6D depicts representations of several folders, including the highlighted “Music” folder. The ’635 application specifically states: A folder content pane UI element 648d in navigation window UI element 646d is presented including representations of one or more data objects[11] at a location, identified in a path UI element 650d. A pointer UI element 652d illustrates a drag and drop operation of a “Music” folder represented in contents pane UI element 648d, dropped on edit window UI element 602d. Ex. 2004 ¶ 123 (emphasis added). The word “Music” in the above figure is a representation of a folder, not the folder itself. The actual folder is an entity in a file system that stores files (in the case of a “Music” folder, presumably MP3 or WAV files, or the like).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner’s arguments are not pertinent to Petitioner’s proffered combination of Houston with Garcia as applied to the remaining challenged claims 17–21. As discussed further below, Petitioner relies on Garcia as supplementing Houston for details regarding the requirements of generating and sending an email with a link to a folder but without a file attachment, and for synchronizing folders and providing interfaces for display of shared folders. Pet. 26–27, 36–39, 57–60. For the challenged claims, Petitioner does not need to rely on the combination to modify Houston’s system such that, when an icon for a shared folder is created in Houston’s interface at an invited user’s client, the client does not store a file in the shared folder — 14 For this argument and others, Patent Owner cites for additional support portions of U.S. Provisional Patent Application No. 61/233,787. PO Resp. 18, 42, 46; Sur-Reply 9–12. This application is designated in Houston as a related application, and incorporated by reference therein. Ex. 1003, code (60), 1:6–10. We denied as untimely Patent Owner’s request to belatedly add this application to the record. Ex. 3002; Paper 39. Even accepting Patent Owner’s representations of the relied-on disclosures in that application, those disclosures are cumulative to Houston’s criticisms of systems that store documents remotely, and are irrelevant for the same reasons as discussed herein with respect to those Houston disclosures. that aspect of the Houston/Garcia combination is only relevant to claims 1–8, which have been disclaimed. Id. at 40–41; Ex. 2045.15 Thus, Patent Owner’s argument that Houston teaches away from combining with Garcia to delay storing a file when a folder is shared is not applicable to Petitioner’s challenges of claim 17–21, in light of our conclusion set forth above in Section III.C rejecting Patent Owner’s proposed construction of claim 17. The fact that the Houston system ensures the availability of synchronized local copies of files at each user’s local system and criticizes systems that store documents remotely, such as in Garcia, is irrelevant to those claims. On this record, there is nothing about that particular difference in the approaches of Houston and Garcia that would support a finding that one of ordinary skill in the art would have been discouraged from adopting Houston to take advantage of the teachings in Garcia regarding use of email and folder interfaces. In sum, Patent Owner focuses on a specific irrelevant detail of Houston regarding local storage of files, whereas Petitioner relies on other features of the combination of Houston and Garcia. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To give substantial weight to objective indicia of nonobviousness such as commercial success, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). A patentee is entitled to a presumption of nexus “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). “[T]he patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Fox Factory, 944 F.3d at 1378. The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). “A finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations”; rather, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, 994 F.3d at 1373–74 (quoting In re Huang, 100 F.3d 125, 140 (Fed. Cir. 1996)). “Ultimately, the fact finder must weigh the [objective indicia] evidence presented in the context of whether the claimed invention as a whole would have been obvious to a skilled artisan.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 33 (PTAB Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331–32 (Fed. Cir. 2016)).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“However, as Petitioner argues above, Houston discloses that a client can provide an email to the server to invite others to share a folder, and Houston explains that “attaching files [to emails is] cumbersome for many computer users.” Pet. 25–26 (citing Ex. 1003, Fig. 4, 1:41–42, 3:40–43, 7:50–51). From this, Petitioner argues that it would have been obvious for the email invitation to notify how to access the folder, rather than sending the folder contents itself. Id. Petitioner further argues that the claim 17[d] requirement would have been obvious over the combination of Houston and Garcia given the disclosure in Garcia of sharing a folder by sending an email with a link to the folder, instead of an attachment. Id. at 27, 57 (citing Ex. 1004, Figs. 9, 11–12, 10:32–34, 10:38–40, 11:39–43, cl. 3). We are persuaded that the record supports Petitioner’s arguments regarding this claim requirement. Both Houston alone, and the combination of Houston and Garcia, teach or suggest sending an email with a link to a folder to be shared, rather than the folder contents. Only if the recipient clicks on the link are the contents of the folder shared. Ex. 1004, 11:29–31. The act of clicking on the link in the email after the email is received is the required “initiation of the communication” that must occur separately from the email itself, as required by claim 17[d]: “causing generation of at least one email [that] does not include a file attachment, for permitting avoidance of at least one file from being communicated to and stored at the second node until an initiation of the communication of the at least one file by a user of the second node is detected and the communication commences via at least one server that stores the at least one file” (emphasis added). It does not matter if Houston or Garcia automatically downloads local copies of files when a recipient clicks on the email link, because that is a separate step following the step of claim 17[d].” slip op. at 46
Patent outcomesUS 11,611,520 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,611,520 - Microsoft Corporation v. Interdigital Patent Holdings, Inc.All claims unpatentablePTAB · Jun 23, 2025 · IPR2024-00306 · APJ Lisa A Murray · IPR · Final written decision
The Board held all challenged claims of the ’933 and ’054 patents unpatentable as obvious over Ahya and McKillop, with ’933 claims 20, 21, 42, and 43 also relying on Aholainen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three devices that used common wireless communications protocols such as Bluetooth and 802.11/Wi-Fi. More education, e.g., a Master’s or Ph.D., would compensate for less work experience and vice versa. 305 Pet. 13–14; accord 306 Pet. 14. Patent Owner “has adopted Microsoft’s definition for this proceeding.” 305 PO Resp. 6; accord 306 PO Resp. 6. Neither party argues that a particular level of ordinary skill in the art makes a difference in the outcome of the issues presented in these proceedings. Accordingly, we adopt Petitioner’s level of ordinary skill in the art, which we find to be consistent with the record evidence, particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We conclude that for the purposes of this Decision, we need not determine whether the claim term “detecting” encompasses “soliciting” detectable responses from other devices, as Patent Owner proposes, Sur- Reply 3, or whether Petitioner is correct that “solicitation and detection are distinct acts, and thus using Bluetooth for solicitation is not using Bluetooth for detection.” Reply 5. As discussed in Section IV above, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp., 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Here, it is not necessary to construe the term “detecting” to determine that no presumption of nexus exists because, for the reasons discussed below, we find that AirDrop is not coextensive with the challenged claims under either party’s interpretation of the term.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“device uses significantly less power than if a high speed seek was used.” Ex. 1005 ¶ 43. However, once a connection between two devices is established, Petitioner persuasively argues that “[a] POSITA would have been motivated to implement devices based on these teachings to switch from Bluetooth to Wi-Fi to transfer content, as taught by McKillop, because Ex. 1003 ¶ 70. Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have reasonably expected to succeed in implementing these features because they would have required only minor software code that was well within the skill of a POSITA, as evidenced by these features’ ubiquity in the prior art.” Pet. 19–20; see Ex. 1003 ¶¶ 38–45 (ubiquity in the prior art), 72 (only “minor software code” required). Petitioner also persuasively argues that one of ordinary skill “would have been further motivated to implement the Ahya+McKillop wireless devices to prompt users to accept or deny incoming file transfers, as described by numerous background references[,]” and would have had a reasonable expectation of success in doing so. Pet. 22; see Ex. 1003 ¶¶ 46– 51 (background references), 78–81 (motivation), 83 (only “minor software code” required to implement combination). We find that on the full record Petitioner has sufficiently established that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Ahya and McKillop. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Here, the evidence demonstrates that AirDrop includes significant unclaimed features that are likely to have been major contributors to any commercial success or industry praise that Apple’s AirDrop-equipped devices have enjoyed. This is true even if the analysis is limited to the AirDrop feature itself, rather than to the entire Apple device. See Sur- Reply 10–11 (“Patent Owner is not claiming the commercial success of the iPhone to show a presumptive nexus. “). Petitioner identifies three major features of AirDrop that are not part of the claimed invention: (1) device visibility controls implemented using iCloud services-based authentication; (2) security, including encryption; and (3) tight integration within the Apple ecosystem. Reply 8; Ex. 1086 ¶ 15. We find that the evidence of these features is sufficient to rebut Patent Owner’s claim that it is entitled to a presumption of nexus.” slip op. at 39
Patent outcomesUS 9,173,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,173,054 - Google LLC v. Security First Innovations, LLCAll claims unpatentablePTAB · May 16, 2025 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Foster; the Board did not reach the instituted Orsini anticipation or obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the invention of the ’609 patent, “would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use,” and that “[a] higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶¶ 37–38).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Initially, we note that Petitioner’s challenge is based on the parties’ proposed district court constructions for “data set.” See Pet. 65–66. But neither party proposes a construction for “data chunks” in this proceeding. Notably, the 83-column Specification of the ’609 patent itself does not use the term “data chunks.” Even so, the meaning of “data chunks” is readily apparent from the plain language: the data chunks are generated “based on a data set,” and the claim defines the steps that comprise the chunk generation, including the relationship between the chunks and the data set. See Ex. 1001, 83:15–30; In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (In all aspects of claim construction, “the name of the game is the claim.” (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims–American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990))).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues, and we agree, that “it does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed [modification].” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016) (cited in Pet. Reply 14–15). Petitioner persuasively explains: [C]ontent-owner storage would not negate benefits of content-service providers (“CSPs”) storing Foster-encrypted content. [The skilled artisan] knew CSPs (e.g., cable-TV companies) often purchased/licensed content from content owners and then securely stored it before delivering to recipients. [Ex. 1099], 84-94. CSPs typically and beneficially encrypted and stored that content for repeated use (e.g., downloads by different customers) – rather than repeatedly encrypting it on-the-fly – and for backup purposes. Petition, 77-78 (citing EX1045, EX1050, EX1059-EX1060; [Ex. 1003], ¶¶206-213); [Ex. 1111], ¶¶102-114 (citing EX1073, [0043] (VOD “pre-encrypt[s]” and “stores the content”); EX1097, 2:31-53 (“real-time encryption [for VOD] poses much greater cost and space issues”); EX1075, 1:51-67; EX1105, [0034]-[0037]; EX1080, 2-7). Pet. Reply 15; see id. at 16–17 (“EX1060, e.g., describes prior-art VOD systems where CSP intermediary ‘servers . . . store all movies.’” (citing Ex. 1060 ¶¶ 7–8 (cited in Pet. 77)) (alteration in original)). As for Patent Owner’s allegation that Petitioner’s proposed modification to Foster would “compromise” Foster’s security, Petitioner argues, and we agree, that, “[b]eyond a conclusory expert declaration, [Patent Owner] offers no evidence that hacking risks or overall storage requirements would increase by storing content at a CSP/intermediary rather than a content owner.” Pet. Reply 17. Petitioner also argues, and we agree, “even if it required ‘increased cost and complexity’ to make CSP storage more secure, that does ‘not show that [the technique] was unknown or could not have practical applications,’ and thus does not support non-obviousness.” Id. at 17–18 (quoting In re Cree, 818 F.3d 694, 700–701 (Fed. Cir. 2016)); id. at 18 (“[I]t is a commonplace fact that design decisions entail making tradeoffs among multiple objectives.” (quoting Corephotonics, Ltd. v. Apple Inc., 2021 WL 4944471, at *6 (Fed. Cir. Oct. 25, 2021)); see Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine [or to modify].”). Although Patent Owner disputes whether a rational reason exists to modify Foster to arrive at the subject limitation (discussed above), Patent Owner otherwise does not dispute reasonable expectation of success in doing so. See generally PO Resp. 32–56.” slip op. at 25
Patent outcomesUS 11,068,609 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,068,609 - BMW Of North America, LLC / Robert Bosch LLC et al. v. Foras Technologies Ltd.All claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01373 · APJ Carl W Whitehead Jr · IPR · Final written decision
Claims 1–8 and 13–22 are unpatentable as obvious over Bigbee and Nguyen because the combination teaches determining whether lockstep is recoverable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 8–9. In its Response, Patent Owner does not take exception to our definition. See PO Resp. 3. However, Patent Owner asserts that a person of ordinary skill in the art “would have the equivalent of a bachelor’s degree in Computer Science, Computer Engineering (or a related field) and approximately two years of work experience with computer architecture design.” Id. We find Patent Owner’s and Petitioner’s definitions of a person of ordinary skill in the art are not meaningfully distinguishable from one another. Accordingly, we do not see the need to modify our adoption of Petitioner’s proposed level of ordinary skill in the art. However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are satisfied that Mr. Jones qualifies as a person of ordinary skill in the art. See, e.g., Ex. 2008, 1 (“Summary” including “embedded systems including both software and hardware”, “Representative Design Work” including, e.g., “Design and implement multiple device drivers for complex Integrated circuits,” “Design of a highly fault tolerant, distributed data acquisition and control, system for a rebreather . . . system architecture, hardware design and layout, embedded firmware, documentation,” “hardware and firmware design,” “[h]ardware and firmware for controlling a unique, battery powered diesel burner…”), 2–3 (list of Publications). We are also satisfied that Mr. Jones’ degree in Electrical and Mechanical Engineering is sufficiently “equivalent” to a degree in Computer Engineering or Computer Science. See PO Sur-reply 11. We decline to give Mr. Jones’ declaration no weight for several additional reasons. One, Petitioner has not moved or otherwise sought to exclude Mr. Jones’ declaration, nor has Petitioner filed an objection. See Pet. Reply 2–5; see also Hearing Tr. 32, 33:15–34:8. Two, we are afforded broad discretion in assigning weight that is to be accorded expert testimony. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“[T]he Board was well within its discretion to give more credibility to [one expert over another] unless no reasonable trier of fact could have done so.”); see also CTPG5 34–36. In sum, Petitioner has not persuaded us that Patent Owner’s expert’s testimony should be given no weight because Mr. Jones is not qualified as a person of ordinary skill in the art according to our definition. See Pet. Reply 2–5; see also PO Sur-reply 10–13. 5 Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner did not challenge Petitioner’s position on these terms. See Prelim. Resp. 1–13. We determined there were no claim terms that needed to be construed in our Institution Decision. See Institution Dec. 9– 10. Post-institution, Patent Owner does not dispute Petitioner’s construction of these terms and “does not believe either term requires construction, because . . . Petitioner fails to demonstrate obviousness regardless of how these terms [(“lockstep is recoverable” and “loss of lockstep is recoverable”)] are construed. PO Resp. 2. We agree with Patent Owner that no claim construction is necessary for purposes of this Decision. That is, we do not discern any claim terms that are in controversy on the full record. 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 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Mr. Jones’ testimony amounts to conjecture because it is unsupported by evidence, for the reasons explained by Petitioner. See Pet. Reply 10–11; Ex. 2007 ¶ 32; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). However, we find that Dr. Brogioli provides sufficient persuasive evidence as to how firmware FRC logic would be used and modified in the Bigbee/Nguyen combination. See Ex. 1002 ¶¶ 57–58, 96–98. As discussed above, Bigbee uses firmware FRC logic to check for an error within a processor core. See Ex. 1005 ¶¶ 35–37, Fig. 4A. Bigbee’s firmware FRC logic does not determine if lockstep is recoverable. Id. Similar to Bigbee, Nguyen also uses firmware FRC logic to check for an error within a processor core. See Ex. 1006 ¶¶ 9, 18, Fig. 7. However, the difference is that Nguyen’s firmware FRC logic determines if lockstep is recoverable. Id. We find for the reasons given by Petitioner and Dr. Brogioli including those summarized supra, that it would have been obvious to one of ordinary skill in the art to modify Bigbee by implementing Nguyen’s determination in firmware. Pet. 33–35 (citing, e.g., Ex. 1002 ¶ 94 (stating that “[i]mplementing logical steps in firmware was known in the art”); ¶ 95 (stating that Bigbee’s system “is compliant with well-known industry standards”); ¶ 98 (stating that “firmware is flexible” and “can be modified after production, updated, and supported relatively quickly and inexpensively.”)). In contrast, Patent Owner’s arguments fail to convince us that a person of ordinary skill in the art, having knowledge of Nguyen’s teaching of determining lockstep recovery, would not have able to modify Bigbee’s firmware FRC logic to determine if lockstep is recoverable. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also id. at 418. Accordingly, Petitioner has presented reasoning, with rational underpinnings, that a person of ordinary skill in the art would have had reasons to modify Bigbee’s firmware FRC logic based upon Nguyen’s teachings and would have had a reasonable expectation of success in doing so. Accordingly, we find for the reasons given that Petitioner demonstrates by a preponderance of the evidence that this element is taught or suggested by the Bigbee/Nguyen combination.” slip op. at 29
Patent outcomesUS 7,502,958 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,502,958 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Aug 19, 2024 · IPR2023-00459 · APJ James P Calve · IPR · Final written decision
Claims 1–7 and 10–31 are unpatentable under §103 over the asserted combinations involving Chandra or Keohane.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 3. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent, but our decision would be the same under either formulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“claims 1, 15, 21, and 27 recite methods in which a first network security appliance of a CSF receives network traffic to inspect, determines whether the traffic was transmitted from a second network security appliance that executed security operations on the traffic, determines network security operations for the first network security appliance to execute based on any security operations executed by the second network security appliance, and executes operations on the traffic. Ex. 1001, 10:58–11:17, 12:31–60, 13:20– 47, 14:13–37. As claimed, network traffic may travel in one direction from a second network security appliance to a first network security appliance. The ’825 patent describes unidirectional traffic as “one embodiment” of the CSF. A first network security appliance receives incoming network traffic and determines if the incoming network traffic is transmitted from a second network security appliance based on the source address of the traffic and determines operations that the second network security appliance executed. Ex. 1001, 2:48–56. In this embodiment, traffic travels in a single incoming direction between network security appliances. Tr. 30:22–31:18. The ’825 patent also describes the “cooperation” in a CSF as “[t]he network packet carrying the flag is transmitted to another member node at the next hop.” Ex. 1001, 6:28–34 (emphasis added); id. at 8:3–8. Traffic always flows from one hop to a next hop along the same path between root 220 at the edge of the network and each particular endpoint (leaf) shown in Figure 2 below. Traffic does not flow along different interconnected paths when it travels from root 220 to an endpoint leaf 240a–240d, 250 as Patent Owner asserts is required of a CSF. PO Resp. 13–15. Figure 2 is “an exemplary topology of a cooperative security fabric (CSF)” with Patent Owner’s annotation of network traffic paths. Ex. 1001, 2:29–31; PO Resp. 16. Traffic travels along a single path from root 220 to branch 230a to leaf 240a to the blue end node. Traffic travels along a single path from root 220 to leaf 250 to the red end node. Traffic from the green node travels along a single path to leaf 240d to branch 230b to root 220. Network security appliances only cooperate along a single red, green,” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“(3) Analysis We agree with Petitioner that “the claims only require two appliances and traffic to go from one appliance to the other.” Reply 11. Nothing in the claims or element 1[a] requires network traffic to originate from outside the private network or the CSF. Dr. Black testifies that the background of the ’825 patent describes a need for a CSF to coordinate operations performed on network traffic that is “transmitted to/from the network” to avoid or reduce redundant operations among members of the CSF” (Ex. 2004 ¶¶ 44, 50), but Dr. Black describes the claimed network fabric and CSF entirely in the context of controlling network traffic transmitted within the enterprise network topology 200 as illustrated in Figure 2 of the ’825 patent (id. ¶ 52), which we discussed in Section II.B.1. supra and reproduce again below. In Figure 2, Patent Owner annotates paths taken by network traffic within network topology 200 comprising root 220, branches 230a, 230b, and leaves 240a–d, 250 within network 200. PO Resp. 16–17; Ex. 2004 ¶ 52. In addition, Chandra’s network 102 is “a collection of individual networks, interconnected with each other and functioning as a single large network.”7 Ex. 1004 ¶ 21. Network 102 can include LANs, WANs, and/or MANs. Id. As a result, network devices 104 located in different networks of network 102 transmit to one another via edge network links 218 within this internetwork of networks 102. Id. ¶¶ 8, 9, 21–30, Figs. 1, 2; Pet. 22–26. Transmitting and receiving CEs 208, 214 are security-based devices at the edges of different networks in network 102 to control incoming network traffic sent between transmitting and receiving network devices 206, 212 located in different networks. Ex. 1004 ¶ 30. A plurality of CEs can be associated with a single PE to receive incoming network traffic from a transmitting CE. Ex. 1004 ¶ 28. Thus, network traffic is transmitted from network devices 104 connected to a plurality of CEs that connect to other CEs via edge network link 218 and to other network devices 104 connected to those CEs “along multiple interconnected paths” (see id. ¶¶ 28–30) that satisfies Patent Owner’s definition of CSF (PO Resp. 13). The sending and receiving CEs “constitute multiple cooperating network security appliances” contrary to Patent Owner’s arguments (PO Resp. 38), as do CEs 208, 214.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Buruganahalli’s topology of devices 50, 52, 54 coordinates security operations that they perform on network data 58 sent from network device 54 to network device 52 to network device 50 from one hop to the next hop. Ex. 1005 ¶¶ 30–32, 34–36, 38–40, 46–48, Fig. 3. We agree with Petitioner that it would have been obvious to update Chandra’s metadata tag for a multi-CE path to indicate actions taken, as Buruganahalli teaches, to reduce latency and resource waste. Pet. 53–54 (citing Ex. 1002 ¶¶ 122, 125 (citing Ex. 1004 ¶ 28)). Dr. Franz testifies it would have been obvious to arrange Chandra’s different network security appliance CEs in series so that traffic passed through multiple CEs that performed different security functions in a CSF before reaching a receiving PE, as Chandra and Buruganahalli teach or suggest. Ex. 1019 ¶ 60 (citing Ex. 1004 ¶¶ 28, 30; Ex. 1002 ¶¶ 122, 125). Patent Owner’s argument that the CEs are not in series does not address Petitioner’s contention that it would have been obvious to place them in series, as Buruganahalli discloses, to perform different security operations on network traffic. Pet. 54; Ex. 1019 ¶ 60; Cf. Sur-reply 20–21. Petitioner contends that Chandra’s system also transmits data packets with updated labels to devices in an extended virtual private network (VPN) shown in Figure 8. Pet. 54. Petitioner asserts it was well known to connect a private network of a remote company site to another network such as an enterprise network using a VPN tunnel, and it would have been obvious to attach the VPN in Figure 8 to a private network as an extension of Figure 2’s private network. Pet. 54–56. Petitioner contends that, in such instances, a receiving CE would transmit data packets with the updated label to a receiving device in an extended network using the transmitting and receiving end configurations shown in Figures 2 and 8 of Chandra. Id. at 54. We agree with Petitioner that a skilled artisan would have been motivated to connect Chandra’s Figure 2 private network to Chandra’s Figure 8 VPN network to extend enterprise network communications so the next device in the extended VPN network would be “a next network appliance participating in the CSF” as claimed. Pet. 54–56; Reply 26–27 (citing Ex. 1019 ¶ 61). We also agree with Dr. Franz who testifies: Contrary to the PO’s assertion that “Petitioner…provides no rationale for why a POSITA would modify Chandra by combining Figures 2 and 8, or explain why a POSITA would reasonably expect it to succeed (POR, 45),” I provided ample reasons why a POSITA would have found it obvious that the VPN in Chandra’s Figure 8 could be attached as an extension to the private network in Chandra’s Figure 2 as illustrated below. In fact, I provided an example of a widely circulated official publication by the U.S. National Security Agency containing a reference architecture that recommended cascading multiple VPN solutions for added security. (Franz. Decl. ¶126-130.) Ex. 1019 ¶ 62 (citing Ex. 1002 ¶¶ 126–130).” slip op. at 30
Patent outcomesUS 10,084,825 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,084,825 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Aug 12, 2024 · IPR2023-00458 · APJ James P Calve · IPR · Final written decision
Claims 1–3, 6, 8–17, and 21–27 are unpatentable under § 103 over the five asserted combinations of prior art.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Final Written Decision under 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2020) as to the patentability of the claims on which we instituted trial. Petitioner bears the burden of proving unpatentability of the challenged claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). For reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 8–17, and 21–27 of the ’678 patent are unpatentable.” slip op. at 2
- Skill levelOther
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan “would have had a B.S. in computer science, computer engineering, or electrical engineering, with at least two years’ experience in computer networking/security.” Pet. 15. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 16–17 (the positions in the PO Response would be the same under either parties’ proposal). The parties’ proposals are substantially the same. Our decision and analysis would be the same under either party’s proposal.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“c. Analysis The ’678 patent describes storage containers as “directories, directory structures, web directories, folders, . . . files and namespaces of the same.” Id. at 6:44–47; id. at 10:12–15. However, it discloses that data is “stored in the namespaces, directories, folders, files or other storage containers of one or more cloud platforms,” which seems to equate namespaces with storage containers. Id. at 9:23–25. In claim 6, “the step of configuring the namespaces comprises storing content of the file as filenames.” Id. at 20:20–22. One definition of “namespace” is a “grouping of one or more names that represent individual objects within the group in a shared computing environment, such as a network.” Microsoft Computer Dictionary, Fifth Edition 130 (Microsoft Press 2002) (Ex. 3001). “The names within a namespace are unique, are created according to the same rules, and can be resolved into a particular identifying item of information, such as an IP address or a network device.” Ex. 3001.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“set of names available for naming things.’” Reply 1 (citing Ex. 1002 ¶ 101; Ex. 1014 (Dictionary of Computer and Internet Terms)); Tr. 5:18–20, 7:21– 8:1. This definition is consistent with the extrinsic evidence cited above. Patent Owner largely agrees with this proposed definition. Dr. Black testifies that “to the extent a namespace is applied to object identifiers, it will define the set of allowable identifiers within a particular context.” Ex. 2003 ¶ 69 (cited in PO Resp. 19). Dr. Black agrees with Dr. Lee’s testimony “that a directory named ‘documents’ is a namespace for the files within that directory––within that ‘documents’ namespace, files can be identified by simply referring to the file name, such as ‘foo.’” Id. ¶ 68. Patent Owner however, asserts that “a name itself (such as an identifier that identifies an object) is not a namespace.” PO Resp. 19. Patent Owner asserts that the ’678 patent provides “an example of creating a namespace for file chunks as part of the encryption process” as “each chunk can be encrypted based on public and private/secret keys defined by the encryption module 210” “where keys are managed based on user-assigned policies.” PO Resp. 20. Patent Owner asserts that “[t]hese policies therefore create a namespace that defines the naming convention for the file chunks (e.g. encryption based on a particular key).” Id. Patent Owner asserts that “storing the file chunks in a folder creates a namespace scope for the file chunks” and namespaces are configured by storing file content as file names. Id. (citing Ex. 2003 ¶ 71); see Tr. 8:5–11, 11:2–12:11. d. Conclusion In view of the foregoing, we adopt Petitioner’s proposed interpretation of “namespace” as “a set of names available for naming things.” Consistent with various exemplary embodiments described in the ’678 patent, the set of names available for naming things may be based on a policy that defines the naming convention for files or file chunks, and a namespace may be created by storing files or file chunks in a folder to create a namespace scope for the files or file chunks.” slip op. at 8
Patent outcomesUS 9,280,678 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,280,678 - Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Jul 15, 2024 · IPR2022-00734 · APJ Garth D Baer · IPR · Remand
On remand, the Board held claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 unpatentable as obvious over Heller and Quam, and over Heller, Quam, and Deaton.
RulingsRemand decision- RemandOther
“After our Final Written Decision (Paper 41) found no challenged claims unpatentable, the Director vacated our Decision and remanded the case back to the Board. Paper 43. With our authorization, Petitioner and Patent Owner filed Briefs on Remand. Paper 45 (“Pet. Remand Br.”), Paper 48 (“PO Remand Br.”). We have jurisdiction under 35 U.S.C. § 6. This decision is a Final Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we discuss below, we determine that Petitioner has proven by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’737 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4–5. 1 Because the parties agree that the challenged claims of the challenged patent have an effective filing date before March 16, 2013, we apply the pre- AIA (“America Invents Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). 2 Heller, “The Site-Model Construction Component of the RADIUS Testbed System,” in Proceedings: ARPA Image Understanding Workshop (1997) (Ex. 1004, “Heller”). 3 Quam, “The Radius Common Development Environment,” in RADIUS: Image Understanding for Imagery Intelligence (1997) (Ex. 1005, “Quam”). 4 U.S. 2006/0235611 A1, Pub. Oct. 19, 2006 (Ex. 1006, “Deaton”). Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. at 5. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that “this limitation should be interpreted broadly enough to encompass transmitting roof measurement information between components of the same computer system,” Pet. 11, whereas Patent Owner contends this limitation requires “transmitting the roof measurement information outside the roof estimate report system . . . such as to third-party systems.” PO Resp. 18. We agree with and adopt Petitioner’s construction. As we explained in IPR2016-00592, “[t]he claim term at issue requires only ‘transmit[ting]’ roof measurement information—it does not specify any particular source or destination for the transmission.” Ex. 1010, 20. In addition, the ’737 patent’s specification states that “the roof [report] generation engine 813 may transmit roof measurement information” and “some portion of the contents . . . of the [Roof Estimation System] 810,” which includes roof report generation engine 813, “may be stored on and/or transmitted over the other computer readable media 805.” Ex. 1001, 17:16–17, 16:13–17 (emphasis added), Fig. 8. Thus, because the ’737 patent’s specification expressly recognizes transmitting roof-estimate content between components of the same computer system, we maintain our construction from IPR2016-00592— that “transmission” includes transmission within the same system. See Ex. 1010, 20.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“The at-issue language appears in preambles, which as a general rule are not limiting unless they are “necessary to give life, meaning and vitality to the claim.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (internal quotation marks omitted). Because claims 16 and 26 describe structurally complete inventions without their preambles, we find the preambles not limiting. In addition, even if the preambles were limiting, the Petition’s analysis, along with Dr. Forsyth’s supporting declaration, plainly indicate that the Heller-Quam RADIUS system includes these generic computing features because RADIUS is a software platform executed by a processor on a computer that utilizes memory. See, e.g., Pet. 20 (explaining that RADIUS is a “workstation-based image processing system,” that “runs on both SunMicrosystems and Silicon Graphics RISC-based workstations,” “utilizes ‘memory,’” and “comprises over 200,000 lines [of code]”); see also Ex. 1041 ¶¶ 36, 38–40. Thus, we agree with Petitioner that the Heller-Quam system teaches the preambles in claims 16 and 26.” slip op. at 11
Patent outcomesUS 9,135,737 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,135,737 - Meta Platforms, Inc. v. Angel Technologies Group LLCAll claims unpatentablePTAB · May 7, 2024 · IPR2023-00057 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–8 are unpatentable under § 103: claims 6–7 over Sharpe and claims 1–5 and 8 over Sharpe and Eintracht; the Carey grounds were not reached.
RulingsFinal written decision- BurdenDecided for petitioner
“the Board cannot deviate from the invalidity theory set forth in a petition in a final determination, and we begin by examining what is present in the Petition in this proceeding. See M & K Holdings, Inc. v. Samsung Elecs. Co., 985 F.3d 1376, 1385 (Fed. Cir. 2021). We agree with Petitioner that it was clear from the Petition that an obviousness ground over Sharpe was presented, and that the Petition describes the “knowledge and skills that [a person of ordinary skill in the art] would have applied to implement Sharpe.” See Pet. Reply 12–13. The Petition describes the ground as relating to obviousness over 35 U.S.C. § 103 and specifically describes one of ordinary skill in the art making certain implementation decisions with respect to employing teachings of Sharpe. Pet. 5 (identification of challenges), 22 (heading), 29–37 (claim 6); see id. at 53–58 (claim 1). The Petition presents an argument, related to limitation 6e of claim 6, for using the Sharpe username as a primary key to archive a digital media item (image) with selected people identified as being in the image, arguing that one of ordinary skill would have found it “suitable” for that use, that it would have been a user) would not have been a suitable primary key. Id. at 29–32; 53 (claim 1, referring back to arguments for limitation 6e). Petitioner indicates a difference between the prior art and the claimed subject matter – that Sharpe does not detail the use of the Sharpe username as a primary key – and addresses that difference. Id. Patent Owner’s Response shows that Patent Owner had notice that Petitioner’s arguments were based on obviousness. PO Resp. 18, 22–23. Our Decision on Institution (at 7, 24–27) indicated the Board’s understanding of the Petition as presenting an obviousness ground over Sharpe, Petitioner’s Reply (at 2–3) clarified this further, and Patent Owner has had an opportunity to respond to the obviousness theories throughout the proceeding. Thus, we perceive no APA issue; Patent Owner has had notice and a fair opportunity to be heard on these matters. See Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (in an IPR, “the Administrative Procedure Act requires the PTO to timely inform a patent owner of the matters of fact and law asserted in an inter partes review of its patent, to give all interested parties opportunity for . . . the submission and consideration of facts and arguments . . . and hearing and decision on notice, and to permit a party to submit rebuttal evidence, and to conduct such crossexamination as may be required for a full and true disclosure of the facts” (internal quotations and citations elided)). With respect to the argument that the Petition was deficient as lacking a showing of a reasonable expectation of success, we agree with Petitioner that Stepan stands for the proposition that such a showing must be made when there is a combination of teachings, including from the same reference. Pet. Reply 15–16; Stepan, 868 F.3d at 1346 n.1 (“Whether a rejection is multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”). We note that Petitioner – in describing the use of Sharpe’s username as a “known design choice” and “the most obvious design choice;” in contrasting the use of personal names, which might be duplicated, with the use of usernames that would be unique; and in citing Dr. Bederson’s testimony to this effect – provides argument and evidence regarding an expectation of success in using the username. Pet. 32 (citing Ex. 1003 ¶¶ 307–309); see Sisvel S.p.A. v. TCT Mobile Int’l Ltd., No. 2023-1123, 2024 WL 1173047 at *3 (Fed. Cir. March 19, 2024) (nonprecedential) (finding a reasonable expectation of success where an expert testified regarding a “simple design choice” and the prior art reference noted a solution as “a good candidate”). For these reasons, we do not find the ground of obviousness over” slip op. at 18
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In the Decision on Institution, we removed the open-ended term “at least” from Petitioner’s proposed definition and adopted that amended definition. Dec. on Inst. 9. Consistently, Patent Owner contends that a person of ordinary skill in the art “would have a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar technical field, with two years of experience in the field of networked and Web-based media applications” and that “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” PO Resp. 16 (citing Ex. 2021 ¶ 44). We adopt Patent Owner’s definition, which is consistent with the specification of the ’432 patent and the prior art and supported by the testimony of both experts.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.”’ Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not appear to use the claim constructions it discusses in the Petition in its unpatentability arguments and Patent Owner does not raise the proper construction of these terms in its Response or Sur-reply. In this case, with respect to “user identifier,” “user identification,” and “contacts,” these terms do not require construction to reach our decision with respect to patentability, and therefore we do not provide any constructions for these terms. See Realtime Data, 912 F.3d at 1375. slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We conclude that the proper construction for “a request for said image data” is not limited to a request for a specific single image, but rather encompasses searches with parameters that would return “said image data” – e.g., an image as previously obtained from an uploading user (see limitation 1b of claim 1 and 6c of claim 6) – either on its own or among a number of images. We do not see a reason, as Patent Owner argues, to limit our understanding of this limitation as directed to the “tagging functionality” functionality.” See PO Sur-reply 8. Indeed, in each case, the “request for said image data” is “receiv[ed] . . . from a viewing user of said computer network.” (Ex. 1001, 17:11–12, 18:37–38) (emphasis added). On the other hand, the tagging process described in the ’432 patent specification appears to correspond to the steps in claim 1 and in claims 6 and 7 (from which claim 8 depends) relating to the “first tagging user” and “second tagging user.” Ex. 1001, 16:38–17:10 (claim 1), 18:12–35 (claims 6 and 7) (emphasis added). Because of this, we understand the “request for said image data” to at least not be limited to the tagging functionality as argued by Patent Owner. Instead, we agree with Petitioner that the proper construction encompasses situations in which multiple images may be retrieved as a response to a request by a viewing user. Ex. 1001, 15:46–16:4, Fig. 10 (cited at Pet. Reply 6–8); see id. at 13:58–62, Fig. 7 (describing an embodiment in which “one or more requested images” are included in a display page along with “a list of identification information for all persons displayed within the image” for each image). Thus, we conclude that the claim term “a request for said image data” encompasses requests directed to retrieval of a larger group of image data (e.g., images) that includes the specific “said image data” that other steps refer to.” slip op. at 12
Patent outcomesUS 8,954,432 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,954,432 - Meta Platforms, Inc. v. Angel Technologies Group LLCAll claims unpatentablePTAB · May 3, 2024 · IPR2023-00060 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Robertson and Lloyd-Jones because the combination teaches the claimed limitations and the reasons to combine are supported by the record.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in 2001 would have had at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar technical field, with at least two years of experience in the field of networked and Web-based media applications. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 23 (citing Ex. 1003 ¶¶ 38–44). Patent Owner submits an essentially identical description of this hypothetical person. PO Resp. 8. We do not determine any meaningful significance to the differences between the parties’ representations. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as to its described lower limit, because it appears to be consistent with the specification of the ’480 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Here, both parties assert that no term requires express construction. Pet. 24; PO Resp. 9. We note that no term is in controversy, and therefore, we do not need to construe any term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))). Consequently, each claim term is given its ordinary and customary meaning.” slip op. at 8
- Obviousness (§103) › Analogous artNon analogous artAnalogous artDecided for patent owner
“relationships between people (users). Ex. 1012, codes (54), (57). We agree with Patent Owner that Petitioner’s characterization of Robertson’s field of endeavor as “the field of networked and Web-based media applications” is too broad. Although Robertson’s use of associations may be used in a photo-based context (see Ex. 1039 ¶¶ 30–31), Robertson is concerned with forming associations between people through user textual input (see Pet. 19– 21), not by associating people with their representations in media. Robertson’s affinity table relates users based on matching fields of data between these users, i.e., which group these users self-identify with (see Ex. 1012, 5:12−22). Robertson, however, does not identify whether persons are represented in a media item (including an image), much less associate the media item to a person located or represented within the media item. The fact that there may be a “convergence of groupware software like Robertson with multimedia applications that incorporated images” (Ex. 1039 ¶ 31) simply underscores that these are separate fields of endeavor. Based on the foregoing, we determine that Robertson is not in the same field of endeavor as the ’480 patent.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The record evidence supports Petitioner’s assertion that incorporating the teachings of Lloyd-Jones would be considered by a person having ordinary skill in the art to lead to improvement in associating contacts and the known use of images in social networking at the relevant time. Specifically, Dr. Bederson’s testimony, which we credit, is that “supplementing a user’s group affiliations with image associations would have advanced the user’s ability to add more contacts” because a person having ordinary skill in the art “would have recognized the importance of images to establishing relationships and connections.” Ex. 1003 ¶ 139. Dr. Bederson’s testimony was not merely unsupported opinion, because it cites to statements in other documents of record for support.” Id. (citing Ex. 1005, 1:20–22 (“[G]roups of people now readily establish archives of digital media items that reflect their activities, relationships and interests.”); Ex. 1029, 1:27–29 (“Today, most digital stories are created by people with computer skills using special-purpose software for editing images and authoring Web pages.”)). Based on the foregoing, we determine that Petitioner has sufficiently shown, and supported in the record, reasoning to combine the teachings of Robertson and Lloyd-Jones.” slip op. at 28
Patent outcomesUS 10,628,480 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,628,480
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.