• Google LLC v. Security First Innovations, LLCAll claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00215 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Foster and Hayhurst; the Board did not reach the anticipation and obviousness grounds based on Orsini.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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.” Pet. 6 (citing Ex. 1003 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Patent Owner submitted the Declaration of Dr. Rubin in support of its Response, and in that Declaration, Dr. Rubin accepted Petitioner’s definition. Ex. 2033 ¶¶ 20–21. For the reasons given, we apply the same level of ordinary skill in the art that we did in the Institution Decision. Inst. Dec. 4.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “See Section II.C.3.a.ii supra. Although Dr. Rubin calls Hayhurst’s security benefits “ancillary” (Ex. 2033 ¶¶ 108–109, quoted in PO Resp. 40), this does not align with Hayhurst (see Ex. 1007 ¶¶ 2, 7, 8, 21). For example, Hayhurst describes the security measures in the Technical Field section (id. ¶ 2) and the Summary of the Invention section (id. ¶¶ 7, 8). Hayhurst also discusses piracy deterrence in both the Summary of the Invention section (id. ¶ 8) and the invention’s detailed description (id. ¶ 21). Because Dr. Rubin does not give sufficient weight to Hayhurst’s discussion of piracy deterrence and security, we do not credit Dr. Rubin’s testimony on this issue. See Ex. 2033 ¶¶ 108–109. Thus, we agree with Petitioner that Hayhurst is reasonably pertinent to the network-security problem that the inventors were trying to solve. See Reply 5–6.” slip op. at 15

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

    “Neither party explicitly proposed constructions during trial, and we do not see the need for construing any terms in this Decision.” slip op. at 8

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

    “3. Claim 1 a. Analogous Art “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Lab. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted)).” slip op. at 9

  Patent outcomesUS 10,452,854 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,452,854
• Netskope, Inc. v. Fortinet, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,084,825
• Meta Platforms, Inc. v. Almondnet, Inc.All claims unpatentable
  PTAB · Mar 13, 2024 · IPR2022-01436 · APJ Lynne H Browne · IPR · Final written decision

  Claims 11, 13–16, 19, and 20 are unpatentable: the Board found them obvious over the stated Rosenberg combinations, reaching neither Merriman ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention of the ’582 Patent “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 12. (citing Ex. 1002 ¶¶ 10–14). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not challenge this definition of the level of skill. PO Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

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

    “Petitioner states that it “does not believe an express claim construction is necessary at this time for this IPR” and Patent Owner “agrees that claim construction is not necessary to resolve any issue . . . and that the plain and ordinary meaning of the claim language should be applied.” See Pet. 13 (citing Ex. 1002 ¶ 37); PO Resp. 6. We agree with the parties that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “(5) Discussion of Limitation (b) We agree with Petitioner and find that Rosenberg meets limitation (b) under either theory advanced in the Petition and credit the testimony of Dr. Schmandt that Rosenberg discloses automatic URL redirection as required by this limitation. Ex. 1002 ¶ 117. During oral argument, Petitioner noted that “[t]he specific embodiment in Rosenberg [that] is being relied on which uses frame tags” discloses URL redirection and argued that “[t]he fact that you could bypass [URL redirection] with an edge case air scenario where maybe you can type a URL directly . . . doesn’t prevent [Rosenberg] from meeting the claim limitation.” Tr., 16:25–17:4. Even if we assume for both theories that Patent Owner is correct that Rosenberg discloses instances where the partial profile is received without URL redirection, that does not negate the fact that Rosenberg discloses instances wherein the partial profile is received as a result of automatic URL redirection. Ex. 1003, 5:36–38, 8:56–68. We agree with Petitioner that Rosenberg’s disclosure of such instances is sufficient to meet the requirements of limitation (b) because “prior art that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.” Hewlett-Packard Co., 340 F.3d at 1326.” slip op. at 23

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

    “Patent Owner’s argument that Petitioner’s reasoning in support of its challenge only applies to two servers is undermined by Dr. Sherwood’s testimony that “a POSITA would seek to create a system that could have been scaled to an arbitrary number of servers, because Rosenberg, Zeff, and Sterne all teach the desirability of such scaling.” Ex. 2001 ¶ 59. Patent Owner’s argument also ignores the fact that Rosenberg repeatedly discloses that its method can be applied to multiple servers. See, e.g., Ex. 1003, 4:16– 19. Moreover, Patent Owner’s argument assumes that one of ordinary skill in the art would not have known how to implement Rosenberg’s method with more than one server. Such arguments are unconvincing, because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. (b) Alleged Additional Reasons Why Petitioner’s Reasoning Lacks Rational Underpinning Regarding Patent Owner’s contention that “the Petition’s ‘visible frame’ approach significantly increases visual clutter,” we agree with Petitioner that this argument does “nothing more than confirm the unremarkable fact that the frame tag embodiment, as with almost all user interface decisions, would have offered both benefits and trade-offs.” PO Resp. 26; Pet. Reply 10. We credit Dr. Schmandt’s testimony that “[a]n ordinarily skilled artisan would thus have been motivated, depending on the needs of the particular system, to employ the frame tag embodiment in Rosenberg to obtain benefits not offered by the other disclosed alternatives.” Ex. 1019 ¶ 23. We further credit Dr. Schmandt’s testimony that any “so-called increase in ‘visual clutter’ also results in an increase in the amount of usable information that can be displayed to the user within the browser window.” Id. ¶ 24.” slip op. at 37

  Patent outcomesUS 8,244,582 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,244,582
• Netflix, Inc. v. Ca, Inc.All claims unpatentable
  PTAB · Aug 23, 2023 · IPR2022-00322 · APJ Jean R Homere · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103(a) over Verbeke, with claims 5, 11, 14, 17, 19, and 20 also unpatentable over Verbeke and Jalan, with or without Neiman.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we observe that Petitioner’s undisputed assessment of a person of ordinary skill in the art is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355. Therefore, for purposes of this Decision, we adopt Petitioner’s assessment, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 19. This assessment is consistent with the ’419 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

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

    “Petitioner proposes to construe “a procedure of [an/the] application” as “a subpart of [an/the] application.” Pet. 20 (citing Ex. 1003 ¶¶ 62–67). Patent Owner characterizes the proposed claim construction as being “not material” to the arguments in its Response, and thereby declines to offer an alternative claim construction. PO Resp. 13. Based on the record before us, we do not discern a need to provide any express claim constructions because doing so would not change the outcome of the analysis below. 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 7

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

    “We have reviewed Petitioner’s contentions and the underlying evidence and find those contentions to be persuasive. In particular, Petitioner’s element-by-element (including the preamble) analysis for claim 1, as well as the specific references to Verbeke’s teachings provide explanation and evidence that sufficiently support Petitioner’s contentions. For the reasons discussed below, we do not agree with Patent Owner that the analysis set forth in the Petition fails to show that Verbeke teaches a first node telling a plurality of nodes to perform a same operation.” slip op. at 20

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

    “Our Review Based on the record before us, and, we agree with Petitioner Verbeke teaches the limitations of dependent claims 5, 11, 14, 17, 19, and 20. In particular, we agree with Petitioner that Verbeke’s disclosure of a job submitter submitting a code to its framework for distribution to worker nodes teaches the first node sending the code to the plurality of nodes, albeit via its framework, to instruct the plurality of nodes how to perform an operation, as well as what to do the result of the operation. Pet. 60. We further agree with Petitioner that Jalan’s parallelization and Neiman’s job division would complement Verbeke’s teaching to predictably result in a distributed computing system, which processes a job more efficiently between a plurality of nodes. Id. at 60–61. We have reviewed Petitioner’s arguments and the underlying evidence cited in support thereof, and we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 5, 11, 14, 17, 19, and 20 are unpatentable under § 103(a) as obvious over the combination of Verbeke with Jalan, as well as the combination of Verbeke with Jalan, and Neiman.” slip op. at 40

  Patent outcomesUS 8,656,419 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,656,419
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30

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

    “The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15

  Patent outcomesUS 9,892,637 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,892,637
• Ringcentral, Inc. v. Estech Systems IP, LLCAll claims unpatentable
  PTAB · Oct 4, 2022 · IPR2021-00573 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 6–15, and 17–31 are unpatentable as obvious over Itoh alone, Itoh with Turnbull, Itoh with Ladd, or Itoh with Turnbull and Ladd.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “6 Turnbull et al., US 5,590,189, issued Dec. 31, 1996 (Ex. 1005). 7 Ladd et al., US 5,117,451, issued May 26, 1992 (Ex. 1006). 8 Citing the testimony of Dr. Houh, Petitioner proposes that a person of ordinary skill in the art with respect to the technology described in the ’349 patent in the 1997 timeframe “would have a working understanding of telephone devices, switched telephone networks, PBX telephone systems, and voicemail systems” and “would have had at least a four-year degree in electrical engineering, telecommunication engineering, or a related field and two years of relevant experience in developing or implementing switched telephone systems and/or PBX systems.” Pet. 14 (citing Ex. 1003 ¶¶ 16–” slip op. at 6

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

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

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

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

    “As stated above, we construe claim terms only to the extent necessary to resolve the issues in dispute (see supra § III.B.1 (citing Nidec Motor, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803)), and we agree with Petitioner that these additional terms do not require construction to resolve the issues before us.” slip op. at 10

  Patent outcomesUS 6,067,349 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,067,349
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision

  Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

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

    “is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9

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

    “added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20

  Patent outcomesUS 9,591,360 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,591,360
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00206 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 are unpatentable as obvious over the stated prior-art combinations.

  RulingsFinal written decision

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

    “U.S. Patent No. 8,825,887 (“the ’887 patent”). The claims of that patent include the same term referring to “at least one portion,” and the ’887 patent shares its written description with the ’636 patent. In our Final Written Decision in CBM2020-00028 (Paper 33, 9−13), we found that the plain and ordinary meaning of this term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” CBM2020-00028, Paper 33 at 10–11. We declined to adopt Patent Owner’s implicit claim construction because it improperly imports extraneous limitations into the claims and excludes a preferred embodiment. Id. at 11–” slip op. at 8

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

    “as “a file containing one or more media references and other information used by a communication device to obtain media.” PO Resp. 14–17. Patent Owner contends that “a play script is not itself limited to being a list.” Id. at 15. Patent Owner argues that a script “is a file, which can be processed by a computer to obtain media” because the claims recite that the play script contains “instructions.” Id. Patent Owner also cites the district court’s adoption of this construction. Id. at 13–14. Whether or not a playlist is a file is not a meaningful distinction for the purposes of this Final Written Decision. As Petitioner notes, all of the “play scripts” identified by Petitioner in the prior art are files. Reply 6. We agree with Petitioner that we need not determine which party’s construction applies for purposes of our analysis. Nidec, 868 F.3d at 1017.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “reservation. Patent Owner now proposes the following construction: “arrangement regarding reserved resources of a streaming system.” PO Resp. 17. Patent Owner cites the specification and Mr. Adam’s testimony 13 for support. Id. (citing Ex. 1001, 10:33−37; Adams Decl. ¶ 110). Mr. Adam relies on the ’636 patent specification, which states that “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37. Further, “[t]he reservation uniquely identifies the viewer 118 or 120 and the customized play script.” Id. at 10:27–28, 10:34–37. The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Based on the description in the specification, we construe “reservation” as “a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37.” slip op. at 13

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Neither party points out any meaningful difference between the parties’ assessments. We therefore apply Patent Owner’s more detailed assessment on the level of ordinary skill in the art. This proposal is consistent with the ’636 patent, the prior art of record, and is supported by 16 the testimony of Mr. Adams. Adams Decl. ¶¶ 27–29. However, our analysis would be the same under either party’s description.” slip op. at 16

  Patent outcomesUS 9,135,636 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,135,636
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterAll claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01410 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–4, 9–13, and 18 as anticipated by Hsiao, and claims 1–18 as obvious over Hsiao and Sun.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not materially differ from that articulated by Mr. Welch. Both require a bachelor’s in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. Neither Petitioner nor Patent Owner indicates that the outcome of any arguments made in this case would change depending on the level of ordinary skill in the art. We adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

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

    “The term “mounted on” appears in several limitations of claim 1, including limitations 1.c, 1.d, and 1.e. The dispute between the parties, however, centers only on how the term should be construed in limitation 1.e, which recites “a contact bar mounted on the connection surface of the substrate” (Ex. 1001, 9:63–64) and only with respect to the Grounds involving Chen. Patent Owner does not dispute Petitioner’s contentions that Hsiao teaches a contact bar “mounted on” the connection surface of the substrate. See PO Resp. 42–55. For the reasons stated below, we determine Petitioner has not shown that Chen teaches certain other limitations of the independent claims regardless of whether it teaches “a contact bar mounted on the connection surface of the substrate.” See infra § II.D.2. Thus, it is not necessary to construe the term “mounted on” to resolve the dispute between the parties.” slip op. at 10

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

    “2. Embedded to be Exposed Upon the Cover of the Contact Bar The only word in the phrase “embedded to be exposed upon the cover of the contact bar,” recited in claims 1, 12, and 18, that Petitioner offers a construction for is the word “embedded,” which Petitioner argues has no special meaning in the art and should be afforded its ordinary dictionary definition of “set firmly into a mass or material.” Pet. 26 (citing Ex. 1005 ¶ 111). Patent Owner does not dispute Petitioner’s construction. PO Resp. 34–35. We adopt Petitioner’s construction, which we find is supported by the evidence of record. Ex. 1005 ¶ 111.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “It is well established that when a party seeks to prove conception through an inventor’s testimony, the party must proffer independent evidence corroborating the inventor’s testimony. Cooper, 154 F.3d at 1330. To be “independent,” the corroborating evidence must be evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). The sufficiency of the proffered corroboration is determined by a “rule of reason” analysis in which all pertinent evidence is examined. See NTP, 654 F.3d at 1291. Even under the “rule of reason” analysis, however, the “evidence of corroboration must not depend solely on the inventor himself.” Cooper, 154 F.3d at 1321; see also Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989) (corroborating evidence must be “independent of information received from the inventor”).” slip op. at 16

  Patent outcomesUS 8,705,243 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,705,243
• On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13

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

    “In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20

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

    “Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25

  Patent outcomesUS 6,212,079 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,212,079

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.