• Samsung Electronics Co., Ltd. v. Almondnet, Inc.No claims unpatentable
  PTAB · Feb 2, 2024 · IPR2022-01259 · APJ Charles J Boudreau · IPR · Final written decision

  The Board held claims 35–51 not unpatentable because the asserted combinations did not show that the claimed computers automatically authorize a distinct third-party second media property to allow ad display.

  RulingsFinal written decision

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

    “Having considered the parties’ arguments, we agree with Petitioner that the recited “system” of claim 35 does not necessarily exclude a “third-party second media property.” As Petitioner points out, claim 35 uses the open-ended transitional phrase “comprising,” such that the recited “system comprising one or more computers” may include components other than the recited “one or more computers.” See Pet. Reply 1 (citing CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)). Moreover, we agree with Petitioner that the phrase “programmed to implement a method of directing electronic advertisements” more naturally modifies “one or more computers,” rather than “system.” Id. at 3. Nonetheless, it is clear from the plain language of claim 35, as well as from the prosecution history of the related ’745 patent, that the third-party second media property must be distinct from such “one or more computers.” Petitioner’s repeated use of the abbreviation “TPSMP” obscures the fact that claim 35 does not simply recite a “second media property” but instead specifically recites a “third-party second media property.” Ex. 1001, 16:18–19 (emphasis added). Highlighting the significance of the modifier “third-party,” as Patent Owner points out, is the fact that that modifier was added to “second media property” in the phrase “automatically electronically authorizing, with at least one of the computers, a third party second media property to allow display, to the electronic visitor when later visiting the second media property, of an advertisement” in an Examiner’s amendment during prosecution of the ’822 patent’s grandparent ’286 application to avoid certain prior art, and the prosecution record of the ’286 application reflects that this amendment was made to make it clear that the recited “authorizing is being done of an unrelated site.” Ex. 2005, 58; see PO Resp. 10–11. More particularly, as Patent Owner points out, the applicant stated in the cited examiner interview report that “the claim structure already made [it] clear” that “the authorizing is being done of an unrelated site . . . because the phrase ‘authorizing’ a site does not seem to cover a site deciding something on its own,” but that the amendment to specify a “third party second media property” made that requirement “explicit.” Ex. 2005, 58; see PO Resp. 7–8 (quoting the same).” slip op. at 23

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s articulation of the level of ordinary skill in the art, minus the phrases “at least” modifying the education and “or more” modifying the number of years of experience. As we explained in our Institution Decision, although Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art, inclusion of such qualifiers render the articulation vague by being open-ended thus encompassing the level of education and experience of an expert, someone with more than ordinary skill in the art. See Dec. 12. Thus, in summary, we find that one with ordinary skill in the art at the pertinent time period would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent, and two years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field, where more education could supplement practical experience and vice versa.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Having considered the parties’ respective contentions in light of the evidence of record, we conclude that Petitioner has not established by a preponderance of the evidence that claim 35 is unpatentable over the combination of Perry, Wilson, and Bronson. In particular, we are not persuaded that the cited prior art teaches or suggests “a system comprising one or more computers programmed to implement a method . . . comprising: . . . automatically electronically authorizing a third-party second media property to allow display . . . of an advertisement correlated with the profile-attribute information received about the visitor.” Although Figure 1 of Perry depicts a “system” that includes computers programmed to implement a method of distributing advertisements to users over the Internet, we are not persuaded that any component in that system implements a method that includes “automatically electronically authorizing a third-party second media property” to display such advertisements. As Patent Owner points out, Petitioner identifies “Internet publisher computer systems 131 and 132” and “advertising service company computer system 140 comprising one or more CPUs 141” as the recited “one or more computers.” Pet. 7; PO Resp. 11. Although there is no dispute that Publisher Systems 131 and 132 and ASC 140 are computers, we find that neither satisfies the remaining limitations of claim 35, particularly because neither “automatically electronically authoriz[es] a third-party second media property” to display advertisements. As we explain in our claim construction discussion above, we are not persuaded by Patent Owner’s arguments that the recited “system” necessarily must exclude the “third-party second media server.” See supra § III.C. Nonetheless, the third-party second media server still must be separate and distinct from the “one or more computers programmed to implement [the recited] method,” lest the modifier “third-party” be rendered meaningless.” slip op. at 54

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Further, Patent Owner did not present Mr. Sherwood as an expert on patent law or claim drafting, and we decline to give substantial weight to his testimony on this issue that is ultimately a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (ruling that the interpretation of patent claims is a matter of law to be determined exclusively by the courts). Still further, Petitioner’s counsel conceded that the formatting of the claim is not dispositive. Tr. 14:14–18.” slip op. at 26

  Patent outcomesUS 8,200,822 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,200,822
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 1, 2023 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 10, 12, 13, and 15 were not shown unpatentable because Petitioner failed to prove a rational reason to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDenied

    “We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2007 ¶ 33. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 51 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2008, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 42

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’036 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 46–47).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “in the District Court Case entered a Markman order construing the Recognizes Limitation, among others. See Ex. 2006, 16–18, 21–22.4 Specifically, the court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). As explained in our Institution Decision (Dec. 17–19), we have reviewed the district court’s reasoning, as well as the ’036 patent and other evidence of record before us, and agree that for reasons given by the district court, the Recognizes Limitation should be given the same construction as determined by the district court. Neither 4 Unless otherwise specified, citations to exhibits use the page numbers assigned by the parties, not the original page numbers. party since has urged (or persuaded) us to revise this construction. Based on the complete record before us, we continue to construe the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” See Dec. 17–19; Ex. 2006, 21–22. Both parties adopt this construction for purposes of their post-institution arguments in this case. See PO Resp. 18–19 (“Patent Owner and its expert apply this claim construction in their analysis in the remainder of this IPR, but do not necessarily agree it is correct.”); see generally Pet. Reply (arguing “matching” as per this construction); Pet. (same).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “modifier. The definite article “the” can be used to modify something plural, e.g., “the digital representations.” Although in claim 1, “the” is used to modify a “digital representation,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional digital representations while one “digital representation” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one digital representation or “no more” than one digital representation, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’036 patent analyzes only a single digital representation, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’036 patent with regard to “a digital representation” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one digital representation. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a digital representation” as recited in claim 1 does not preclude involvement of an additional digital representation or digital representations in the analysis.” slip op. at 17

  Patent outcomesUS 8,478,036 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,036
• Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedNo claims unpatentable
  PTAB · Mar 7, 2018 · IPR2016-01724 · APJ Rama G Elluru · IPR · Final written decision

  Claims 1, 2, 5–8, 11–13, 21, 22, 26, and 27 were not shown unpatentable under § 103 because motivation to combine and reasonable expectation of success were not established.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in electrical engineering or biomedical engineering or a related discipline with an understanding of circuit design principles, and a reasonable amount of relevant product design experience to develop a level of competence in the field of respiratory therapy, or an equivalent advanced education.” Pet. 18; Ex. 1003 ¶ 22. Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 9. We adopt Petitioner’s uncontested definition of the level of ordinary skill in the art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an” slip op. at 6

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

    “For the purposes of this Decision, we determine that no claim term needs express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7

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

    “Tempered against Petitioner’s evidence of an alleged motivation to combine MR810, Gradon, and Edirisuriya is the uncertainty of operability of the proposed combination. With respect to each of the proposed circuit designs that Petitioner contends a skilled artisan would have been aware of to implement the combined teachings, a skilled artisan would have been faced with the real-world fact that there was uncertainty as to the operability of the design. First, the circuit designs that Petitioner proposes a skilled artisan would have utilized are not based on disclosure in the prior art. See Pet. Reply 5–7; Ex. 1032 ¶¶ 13–22. Petitioner does not rely on any prior art showing a circuit that allows a heater wire also to carry measurement signals. Pet. Reply 5–7; Ex. 2018, 19:6–21:17 (Petitioner’s expert, Mr. Bath, confirms that he did not locate any prior art references disclosing a circuit design in which the heater wire is utilized to carry electrical signals from measuring sensors). Moreover, Petitioner does not otherwise sufficiently rely on evidence that any of the proposed circuit designs would have been reasonably expected to be operable in any device, much less a humidification system. See Pet. Reply 5–7. Furthermore, Mr. Bath admits that these proposed designs are incomplete and would require additional non-trivial components. Ex. 2018, 89:13–90:21. He stated, “An engineer designing this system would need to take into account one change in the system by adjusting the rest of it to suit.” Id. at 89:16–18.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “We further find that Petitioner’s challenges rest on impermissible hindsight reconstruction of the disclosure in the ’641 patent. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983))). All of the circuit designs Petitioner proposes a skilled artisan could have used to implement the asserted combination are hindsight reconstructions based on the disclosure in the ’641 patent. The ’641 patent describes switching the heater wire between two modes of use— carrying temperature measurement signals and heating the gas delivery tube —by inserting a component in parallel with a temperature measuring thermistor to switch the current path of the heater wire between the thermistor and the parallel-connected component. Specifically, the ’641 patent discloses switching the current flowing in heater wire 21, 28 between the parallel paths of thermistor 23 and diode 22, depending on whether heater wire 21, 28 is being used to carry temperature measurement signals or heat gas delivery tube 3, respectively. Ex. 1001, 4:8–21. Each of Petitioner’s proposed circuits, drawn solely from the testimony of Mr. Bath and not supported by the prior art, has a similar purpose. Petitioner’s first proposed circuit contains a capacitor connected in parallel with a thermistor to switch the path of the heating wire current between the thermistor, when the heating wire is being used to carry temperature measurement signals, and the capacitor, when the heating wire is being used to heat the breathing tube. Ex. 1032 ¶¶ 15–16. Petitioner’s second proposed circuit contains a gate-todrain connected MOSFET connected in parallel with a thermistor to switch the path of the heating wire current between the thermistor, when the heating” slip op. at 25

  Patent outcomesUS 8,453,641 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,453,641
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00956 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving incoming code.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We have considered these constructions in light of the full trial record. We see no compelling reason to alter these constructions in light of the parties’ 4 We repeat our observation from the Institution Decision that claim 9 recites “detecting any one of a plurality of programming languages in which the incoming stream is written” (emphasis added), but requires instantiating the scanner “in response to said determining” (emphasis added), without apparent antecedent basis. We consider “said determining” in claim 9 as intended to refer to the previously recited “detecting,” in parallel with the structure of claims 1 and 22. Dec. 11 n.4. positions as developed during the trial, and we therefore adopt them for this Final Written Decision. See PO Resp. 12–13 (“Although Patent Owner maintains that the terms ‘dynamically building’ and ‘dynamically detecting’ do not require construction, it does not contest these constructions for purposes of this proceeding, and they are, therefore, controlling.”); Reply 3 (noting Patent Owner does not contest the preliminary constructions of “dynamically building” and “dynamically detecting”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

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

    “Consequently, Dr. Medvidovic opines, and we agree, that “simply because Chandnani’s tokenizer operates on a data stream does not demand or even imply that the data stream is being received while being tokenized.” Id. As Patent Owner contends, because Chandnani discloses that operation of the tokenizer “only occurs on the second pass through the data stream, . . . the data stream must have already been received before the stream of tokens is generated.” PO Resp. 21. “[W]hile it is conceivable (though not explicitly disclosed) that a data stream might be ‘incoming’ while Chandnani uses the ‘language check data to select the language definition data to use for the detection process,’ it is not possible for the data stream to still be ‘incoming’ when the data stream ‘is lexically analyzed again, this time using the language definition data, to generate a stream of tokens.’” Id. (citing Ex. 1003, col. 8, ll. 4–17; Ex. 2007 ¶¶ 73–74).” slip op. at 20

  Patent outcomesUS 8,225,408 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00157 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable under the instituted §103 grounds because the art did not teach dynamically building a parse tree while receiving the code …

  RulingsFinal written decision

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

    “The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “At the oral hearing, we expressed surprise that a party would seek to exclude the cross-examination testimony of its own expert witness. See Tr. 49:19–52:8. Patent Owner’s counsel explained that it “provided a motion to exclude based on the way that the evidence was used in the reply.” Tr. 50:1–6. But the Board has previously explained that “neither a motion to strike nor a motion to exclude is a proper mechanism to present argument that a reply contains new arguments.” Ultratec, Inc. v. Sorenson Communications, Inc., Case IPR2013-00288, Paper 38 at 2 (PTAB May 23, 2014). Rather, an evaluation of the propriety of, and weight to be accorded to, arguments made in a reply is left to the determination of the Board, with parties afforded various opportunities to provide context for the evidence. See 37 C.F.R. §§ 42.23, 42.65. We, therefore, consider Patent Owner’s arguments as going to the weight that should be given to the cross-examination testimony and related deposition exhibit, not to the admissibility of that evidence. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As indicated above, we have considered and weighed the testimony provided by Dr. Medvidovic and have not relied on the testimony of Dr. Bims in reaching our decision. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 25

  Patent outcomesUS 8,225,408 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00919 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan did not teach invocation of the second function only if safe, and the asserted three-reference combination lacked a sufficient motivation to combine.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “reference to a “data container” (id. at 13:5152) and “network content” (id. at 4:3737), the concern over scripts embedded in web pages or “other web content” (id. at 1:3739), we conclude that the Specification of the ’154 patent uses the claimed “content” to refer broadly to the data or information, modified for processing, that the client receives from the network, where, in the case of the Internet, it may refer to a web page and its elements. This interpretation is consistent also with the meaning of the term in the art, as evidenced by dictionaries concerning computing and engineering. See content, Microsoft Computer Dictionary, 125 (5th ed. 2002) (Ex. 3002) (defining “content” as (1) “the data that appears between the starting and ending tags of an element in an SGML, XML, or HTML document. The content of an element may consist of plain text or other elements,” (2) “The message body of a newsgroup article or e-mail message;” and (3) “The ‘meat’ of a document, as opposed to its format or appearance.”); see also content, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY, 142 (2004) (Ex. 3001) (“Information, especially that which is available online, which may be any combination of text, audio, video, files, or the like.”). Accordingly, under the broadest reasonable interpretation in the context of the Specification and the surrounding claim language, we conclude that “content” is data or information, which has been modified and is received over a network.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “first function.” The Specification, however, does use the phrase “function call” to state that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3743 (emphasis added). The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. Therefore, we understand the Specification to use the phrase “function call” in the same sense as the phrase “call to a [] function.” That is, a program instruction specifies the function name and its parameters, where execution of the instruction results in the function providing a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Id. (displaying a stamp labeled “Engineering Periodicals, University of Washington, Jan 31, 2000”). Additionally, the cover page includes a label stating “Engineering Library Display Periodical Noncirculating until: Mar 08 2000.” Id. The stamps and labels are described by Mr. Melvin (“Mel”) DeSart, Head of the University of Washington Engineering Library, as evidence that the Library’s process was to stamp a received periodical and to affix a label when the periodical was chosen for display at the Engineering Library Display Periodicals area. Ex. 1036 ¶ 2. According to DeSart, the stamp and label convey that the article was received (and, therefore, stamped) at the University of Washington Libraries, on January 31, 2000, and was redirected to the Engineering Library, where it was added to the display and made “publicly available” from February 8, 2000 until March 8, 2000. Id. ¶ 3. We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8.” slip op. at 25

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable over Ross because Ross does not teach or suggest content including a call to a first function.

  RulingsFinal written decision

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

    “first function.” But the Specification uses the phrase “function call” in stating that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3842. The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. From such examples, we understand the Specification to use the phrase “function call” in the same sense that the claims recite in the phrase “call to a [] function.” That is, a “call” is part of the recited “content,” as a statement or instruction containing the function that, when executed, causes the function to provide a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 7

  • Skill levelSkill level board ownOther

    “of ordinary skill that is different from Petitioner’s. Ex. 2035 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year’s experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 39. Accordingly, we determine that in this case no express articulation of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

  • Expert testimonyPatent owner expert creditedOther

    “Ross describes the combined hook script and the original script as using an “assignment,” not a “call” for invoking the first function. PO Resp. 2324 (citing Ex. 2035 ¶61). We credit this testimony. Ross illustrates in Figure 4, reproduced below, a combined script, which shows more detail regarding how Ross formulates the hook script and the included hook function. See Ex. 1003, Fig. 4. Figure 4 illustrates combined script 402 including hook script 404 and original script 302. Id. Dr. Medvidovic identifies the hook function in hook script 404 as “function HookedActiveXObject(objname).” Ex. 2035 ¶ 61. The combined script does not include a call to the function “HookedActiveXObject.” Instead, as Dr. Medvidovic explains, Ross’s hook script includes a call to the original function, not the hook function, as shown below in Patent Owner’s annotated Figure 4. The annotated Figure 4 of Ross, above, annotates Ross’s script by pointing out: (1) in brackets, that a group of instructions comprise the function “Hooked ActiveXObject(objname);” and (2) that the body of the function is the “Hook Function.” See PO Resp. 23. The annotations also show that the instruction “Req=new ActiveXObject(“Microsoft.XMLHTTP”)” is the “Call to Original Function.” Id. Dr. Medvidovic explains that the call to “new ActiveXObject(“Microsoft.XMLHTTP”) indirectly invokes “function HookedActiveXObject,” using Ross’s assignment technique. See Ex. 2035 ¶ 61. Ross’s description of the hook functions confirms this technique. For example, Ross states that “[t]he hook function corresponding to the data content original function is executed when the original function is called.” Ex. 1003, Abstract; see also ¶ 13 (“executing a hook function when a corresponding original function is called in the data content”). Ross further states that the “hook function is configured to supersede a corresponding original function.” Id. ¶¶ 1012.” slip op. at 14

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

    “the first function, the issue is not simply whether Ross executes or processes the first function first, before the second function. The issue is whether the content in Ross includes a “call to a first function,” as claimed. We find that Ross does not. Patent Owner’s explanation of Ross is consistent with Ross’s description of how the hook script is generated and processed. Ross’s hook script generator creates new functions to replace the original functions, such as the JavaScript function embedded in a web page. Id. ¶ 26. When the web page is received, the script filter injects “the JavaScript that hooks the critical functions and methods before any other HTML in a loading page.” Id. ¶ 29. To implement these “hooks,” Ross states that it replaces the original function with a new replacement function or that it substitutes an original function with a filtered function by instantiating a “hooked” process. Id. ¶¶ 33, 34. These statements of “replacement” and “substitution,” however, refer to how the hook functions are implemented when the script executes. Neither of these statements explains whether a “call” to a hook function is included in the script. That is, the replacement or substitution may result in invoking the hook function, without the content actually including a call. And this indirect invocation—not using a call—of the hooked function is what Ross tends to show. For instance, Ross describes the method of processing the content as follows: (1) generating a hook script with a hook function; (2) loading the hook script; (3) loading the data content having the original function; and (4) executing a hook function when a corresponding original function is called in the data content. Id. ¶ 38. Thus, the hook function is loaded before anything else is loaded in order to define the hook function and to effectuate the replacement. The replacement, or the method of superseding, is accomplished by the assignment that results from the use of the instruction ActiveXObject=HookedActiveXObject. As Dr. Medvidovic explains, by way of assignment of ActiveXObject (original function) to HookedActiveXObject (substitute or first function), a call to the original function indirectly invokes the substitute or first function. See Ex. 1011, 10:2013:21. This understanding is further confirmed by Ross’s description of the hook functions, as stated above, and when it refers to them as “new objects that will be used as replacements when the appropriate constructor is invoked.” Ex. 1003 ¶ 35 (emphasis added). In sum, Ross’s content does not include a “call to a first function” because the hook function is not directly called. There is no instruction or statement in the hook script that requests the service of the hook function. See also Ex. 2043 at 88:1116 (Dr. Rubin, Petitioner’s expert, testifying that “in the pseudocode in figure 4 [of Ross] there’s no explicit call to a hooked function.”). The hook function is invoked only when the call to the original function in the data content, which has been assigned via the hook script to a hook function, is executed. See id. (“These hooks are installed before any other script on the web page loads, ensuring that any script provided as a part of the data content 602, such as a web page, will call the new hooked functions.”).” slip op. at 17

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2015-01979 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable: Khazan does not teach conditional invocation of the second function, and the proposed three-reference combination lacks adequate motivation.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Patent Owner’s expert Dr. Medvidovic disagrees with Dr. Rubin’s opinion that instrumentation can occur in many hosts. Ex. 2002 ¶ 71. His testimony is unconvincing, however. Dr. Medvidovic does not address Dr. Rubin’s assessment that Khazan teaches instrumentation on a host that is different from the host that executes the wrapped function. Instead, Dr. Medvidovic asserts that Khazan does not disclose applications received through a network. Id. Further, Dr. Medvidovic opines that Khazan addresses viruses that infect applications resident within a computer’s file rather than in content received over a network. Id. We find that Dr. Medvidovic’s statements do not address Petitioner’s contention and ignore relevant teachings of Khazan. For instance, Khazan teaches that each host accesses information stored in data storage devices using a network (communication medium). Ex. 1003 ¶ 33. And any of Khazan’s components—e.g., static analyzer, dynamic analyzer, libraries, application executable, etc.—may be stored in the data storage system. See id. ¶ 72 (describing Figure 4A, which also lists the various lists 106, 111, 112). Therefore, we do not agree with Patent Owner’s narrow assessment of Khazan, which would limit application of Khazan’s techniques exclusively to a file resident in the host, rather than on content received over a network. Indeed, Khazan expressly discloses an embodiment in which instrumentation is performed “before invocation of the application” allowing for the instrumented library (or application) to be stored on a storage device. Ex. 1003 ¶ 75. That storage device, as discussed above, is accessed via a network. Accordingly, it is reasonable to conclude, and we find that, Khazan teaches or suggests that any host may receive over the network (communication medium 18) instrumented applications or libraries for processing at the host.” slip op. at 36

  • Skill levelSkill level board ownOther

    “level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8. We also find that skilled artisans exercising reasonable diligence would have been able to locate Sirer. In addition to the accessibility of the article on the library display area and on shelves, DeSart testified that the periodical containing the Sirer, “Operating Systems Review,” was catalogued in the library’s electronic catalog. Ex. 2006, 10:1311:23. The periodical could be searched by the title of the periodical and its keywords. Id.; 30:1431:9.” slip op. at 25

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

    “We find that Petitioner has not explained sufficiently how the reference’s teachings would be combined in order to achieve the claimed limitations. For instance, Petitioner’s assertion that the combination is predictable because the references continue to do what they did prior to the combination (Ex. 1002 ¶ 125) is conclusory and unreasonable in light of the various and necessary, yet unexplained modifications of Khazan’s teachings for combinability with those of Sirer and Ben-Natan.” slip op. at 60

  Patent outcomesUS 8,141,154 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Hulu, LLC / Netflix, Inc. et al. v. CRFD Research, Inc.No claims unpatentable
  PTAB · Jun 1, 2016 · IPR2015-00259 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and 38–41 were not shown unpatentable because the prior art did not teach transmitting session history after discontinuing the session.

  RulingsFinal written decision

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

    “Claim Term Interpretation “modality” a preferred mode of interaction “device profile” information pertaining to the operation of a device, such as the data format or modality of the device “in response to . . . in response to the second device being made activation of said active, such as by a user logging on to the second device” second device “session” a series of information transactions between communicating devices during a particular time period “discontinuing” terminating or otherwise stopping, with the ability to be resumed “discontinued” terminated or otherwise stopped, with the ability to be resumed “session transfer computer hardware and/or software that module” participates in the transfer of a session See Dec. on Inst. 6–9; DISH Network Corp. v. CRFD Research, Inc., Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9); Unified Patents Inc. v. CRFD Research, Inc., Case IPR2015-00157, slip op. at 6–9 (PTAB Apr. 30, 2015) (Paper 8); Iron Dome LLC v. CRFD Research, Inc., Case IPR2015-00055, slip op. at 6–10 (PTAB Apr. 27, 2015) (Paper 10). The parties do not dispute these interpretations in their Patent Owner Response and Reply. We do not perceive any reason or evidence that compels any deviation from these interpretations. Accordingly, we adopt our previous analysis for purposes of this Decision.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Having reviewed all of the parties’ arguments and supporting evidence, we conclude that Petitioner has not shown, by a preponderance of the evidence, that Bates expressly or inherently discloses transmitting the session history “after said session is discontinued on said first device.” See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). We begin by noting that there is nothing in Bates explicitly disclosing when the alleged “session” ends. Petitioner acknowledged this at the hearing. Tr. 42:5–8. Bates, however, does disclose what occurs during a “session.” The term “session” in the claims means a series of information transactions between communicating devices during a particular time period. See supra Section II.A. Bates uses the slightly different term “browsing session,” which it defines as the “period of time when the browser 240 is executing on a client computer 106 and a network connection exists between the client 106 and the network 104 allowing a user to traverse network addresses corresponding to the servers 108.” Ex. 1004, col. 4, ll. 61–67. Thus, the “browsing session” in Bates is the period of time when the browser program is “executing” on the client computer and the client computer has an open connection to the network servers with which it is communicating. During this time, the client computer in Bates generates browser information in response to user input (e.g., by creating a history of websites visited by the user). See id. at Abstract (“A first browser executing on a first computer generates browser information in response to user input.”), col. 9, ll. 17–46 (describing the generation and storage of browser information in buffer 242), col. 2, ll. 2–10 (reciting “generating the user-configured browser information during execution of a first network browser on a first computer in response to user-input commands”), claim 1 (same). Accordingly, the alleged “session” in Bates (i.e., the series of information transactions between communicating devices) occurs during the time period of what Bates refers to as the “browsing session.”” slip op. at 13

  • Strike new argumentNew argument disregardedOther

    “that are procedurally improper and not entitled to consideration. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., – F.3d –, 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at 44 (PTAB May 6, 2016) (Paper 50) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”). First, Petitioner provides a lengthy explanation as to how a person of ordinary skill in the art would have understood Bates to operate based on the alleged timing of Microsoft Windows shutdown signals and the interaction between a browser application and email software. Reply 6–9. Petitioner’s explanation amounts to a new theory for why Bates allegedly discloses transmitting the session history “after said session is discontinued on said first device” that was not discussed in the Petition. See Pet. 20–24 (citing only Bates’s disclosure of the events “upon user request,” “at shutdown,” and “at idle period”); Tr. 9:1–4 (acknowledging that shutdown signals are not discussed in the Petition). Indeed, Petitioner does not cite in its Reply any testimony from Dr. Claypool’s declaration or other evidence submitted with the Petition, but rather relies solely on the cross-examination testimony of Patent Owner’s declarant, Dr. Mohapatra. See Pet. 20–24 (citing Ex. 1003); Reply 6–9 (citing Ex. 1018); Tr. 13:18–21.” slip op. at 18

  • Skill levelSkill level board ownDecided for patent owner

    “KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field as well as at least two years of academic or industry experience in the software field,” citing the testimony of Dr. Claypool. Pet. 8 (citing Ex. 1003 ¶¶ 55–58). Dr. Mohapatra similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science or computer engineering with approximately 2 years of practical work experience or post-graduate research in a field such as computer networking and/or distributed systems.” Ex. 2001 ¶ 11. Based on our review of the ’233 patent, the types of problems and solutions described in the ’233 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in computer science or computer engineering (or its equivalent), and at least two years of experience with computer networking, distributed systems, or similar fields. See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he invention generally relates to session management in a distributed computer network,” and describing issues in the prior art when a user has “several communication-enabled devices” and wants to switch between them). We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 21

  Patent outcomesUS 7,191,233 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,191,233
• ABB, Inc. v. Roy-G-Biv CorporationNo claims unpatentable
  PTAB · May 16, 2014 · IPR2013-00063 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1-5 were not shown unpatentable as obvious over Gertz, Stewart, and Morrow because the evidence did not establish the claimed component function and component code.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “As discussed in the ’062 Decision, we give significant weight to the testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are not the same as the claimed component functions and that Gertz does not describe any code (i.e., the claimed component code) that associates component functions with driver functions, as claimed. ʼ062 Decision 22- 25. Petitioner does not provide sufficient evidence to rebut this testimony. Thus, as described below, we are not persuaded that Petitioner has established, by a preponderance of the evidence, that the combination of Gertz, Stewart, and Morrow renders claims 1-5 unpatentable under 35 U.S.C. § 103(a).” slip op. at 11

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

    “1. “component function” The parties present the same opposing views on the construction of this term as those discussed in the ’062 Decision at page 14. See PO Resp. 19; Pet. Reply 8. For the reasons set forth in the ’062 Decision at pages 14- 15, we conclude that the broadest reasonable interpretation of the term “component function” requires an action carried out by a program or routine, regardless of whether the action is defined by executable code. This is consistent with the Specification of the ’058 patent, which explains that “[t]he application program 26 comprises a sequence of component functions arranged to define the motion control operations necessary to control a motion control device to move an object in a desired manner.” Ex. 1001, col. 7, ll. 54-58. 2. “component code” The parties have the same disagreement on the construction of this term as that discussed in the ’062 Decision at page 15. See PO Resp. 20; Pet. Reply 8. For the reasons discussed in the ’062 Decision at pages 15-16, we determine that the term “component code” requires program instructions. This is consistent with the Specification of the ’058 patent, which explains that “the software system designer writes component code that associates at least some of the component functions with at least some of the driver functions.” Ex. 1001, col. 7, ll. 17-20.” slip op. at 10

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

    “IPR2013-00062. Petitioner relies on Gertz’s “actions” to meet this claim limitation. Pet. 26; Transcript 17:21-24. Patent Owner contends that Gertz’s “actions” are not component functions. PO Resp. 19, 27 (citing Stewart’s Declaration, Ex. 2013 ¶ 40). For the reasons set forth in the ’062 Decision, we agree with Patent Owner and determine that Petitioner has not persuasively explained why information regarding the arrangement of control tasks defines an “action carried out by a program or routine,” as required by a component function. ʼ062 Decision 23. Thus, Petitioner has not established, by a preponderance of the evidence, that Gertz teaches the claimed component functions.” slip op. at 12

  Patent outcomesUS 6,513,058 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,513,058

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.