- Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Jul 15, 2024 · IPR2022-00734 · APJ Garth D Baer · IPR · Remand
On remand, the Board held claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 unpatentable as obvious over Heller and Quam, and over Heller, Quam, and Deaton.
RulingsRemand decision- RemandOther
“After our Final Written Decision (Paper 41) found no challenged claims unpatentable, the Director vacated our Decision and remanded the case back to the Board. Paper 43. With our authorization, Petitioner and Patent Owner filed Briefs on Remand. Paper 45 (“Pet. Remand Br.”), Paper 48 (“PO Remand Br.”). We have jurisdiction under 35 U.S.C. § 6. This decision is a Final Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we discuss below, we determine that Petitioner has proven by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’737 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4–5. 1 Because the parties agree that the challenged claims of the challenged patent have an effective filing date before March 16, 2013, we apply the pre- AIA (“America Invents Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). 2 Heller, “The Site-Model Construction Component of the RADIUS Testbed System,” in Proceedings: ARPA Image Understanding Workshop (1997) (Ex. 1004, “Heller”). 3 Quam, “The Radius Common Development Environment,” in RADIUS: Image Understanding for Imagery Intelligence (1997) (Ex. 1005, “Quam”). 4 U.S. 2006/0235611 A1, Pub. Oct. 19, 2006 (Ex. 1006, “Deaton”). Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. at 5. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that “this limitation should be interpreted broadly enough to encompass transmitting roof measurement information between components of the same computer system,” Pet. 11, whereas Patent Owner contends this limitation requires “transmitting the roof measurement information outside the roof estimate report system . . . such as to third-party systems.” PO Resp. 18. We agree with and adopt Petitioner’s construction. As we explained in IPR2016-00592, “[t]he claim term at issue requires only ‘transmit[ting]’ roof measurement information—it does not specify any particular source or destination for the transmission.” Ex. 1010, 20. In addition, the ’737 patent’s specification states that “the roof [report] generation engine 813 may transmit roof measurement information” and “some portion of the contents . . . of the [Roof Estimation System] 810,” which includes roof report generation engine 813, “may be stored on and/or transmitted over the other computer readable media 805.” Ex. 1001, 17:16–17, 16:13–17 (emphasis added), Fig. 8. Thus, because the ’737 patent’s specification expressly recognizes transmitting roof-estimate content between components of the same computer system, we maintain our construction from IPR2016-00592— that “transmission” includes transmission within the same system. See Ex. 1010, 20.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“The at-issue language appears in preambles, which as a general rule are not limiting unless they are “necessary to give life, meaning and vitality to the claim.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (internal quotation marks omitted). Because claims 16 and 26 describe structurally complete inventions without their preambles, we find the preambles not limiting. In addition, even if the preambles were limiting, the Petition’s analysis, along with Dr. Forsyth’s supporting declaration, plainly indicate that the Heller-Quam RADIUS system includes these generic computing features because RADIUS is a software platform executed by a processor on a computer that utilizes memory. See, e.g., Pet. 20 (explaining that RADIUS is a “workstation-based image processing system,” that “runs on both SunMicrosystems and Silicon Graphics RISC-based workstations,” “utilizes ‘memory,’” and “comprises over 200,000 lines [of code]”); see also Ex. 1041 ¶¶ 36, 38–40. Thus, we agree with Petitioner that the Heller-Quam system teaches the preambles in claims 16 and 26.” slip op. at 11
Patent outcomesUS 9,135,737 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,135,737 - Trend Micro Inc. v. Cupp Computing AsAll claims unpatentablePTAB · Apr 14, 2023 · IPR2019-00641 · APJ Thomas L Giannetti · IPR · Remand
On remand, the Board determined claim 7 unpatentable as obvious over Sikdar and RFC 2616, and separately over Sikdar and Wright.
RulingsRemand decision- RemandOther
“It is with this determination by the Federal Circuit, which is binding on this panel, that we evaluate on remand Petitioner’s contention that the “dynamically isolating” limitation is met by Sikdar. PO Resp. 32–40; Sur-reply 12–16. Quoting the Board’s construction of “dynamically isolating,” the Federal Circuit’s Decision specifically states that “Sikdar clearly discloses ‘the use of DHCP or other source of addresses in connection with a NAT engine to translate IP addresses.’” Decision 10. The Federal Circuit, therefore, held that Sikdar discloses “dynamically isolating” under the Board’s construction adopted by the parties: This claim construction does not require the use of DHCP or a source that is, in some narrowing way, similar or comparable to DHCP. By its broad terms, this construction simply requires any source of addresses—“DHCP or other source of addresses.” Id. The Federal Circuit further explained its holding that Sikdar teaches “dynamically isolating”: Sikdar teaches this aspect of the claim construction in several ways: It discloses that the SPU “generates” the public IP address, says that this address is “usually” the address “assigned to” the firewall, and describes, in an alternative embodiment, a one-to-one mapping of private and public addresses. These disclosures teach a “source of addresses in connection with a NAT engine to translate IP addresses.” Id. (citation omitted). In reaching this conclusion, the Federal Circuit discussed and rejected the reasoning advanced by Patent Owner and the” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Relying on the specification and the claims, in our Final Written Decision, we construed “dynamically isolating” as including the use of DHCP or other source of addresses in connection with a NAT engine to translate IP addresses. FWD 20. Before the Federal Circuit, the Board’s construction for this claim term was “accepted as correct by both parties.” Decision 7. We therefore maintain our construction here. We did not find it necessary to construe any other claim terms in our” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In a recent decision, the Federal Circuit reminded us that “[t]he motivation-to-combine analysis is a flexible one. Any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023) (citing KSR Int’l Co. v. Teleflex, 550 U.S. 398, 420 (2007)) (alterations and internal quotation marks omitted). The Federal Circuit further instructed that “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. (quoting KSR, 550 U.S. at 421 (alterations omitted.)). Applying the Federal Circuit’s “flexible” standard, we find that for the reasons given, Petitioner has demonstrated a motivation to combine the teachings of Sikdar and RFC 2616, and Sikdar and Wright, as proposed by Petitioner, with a reasonable expectation of success. We find that Petitioner’s answer to Patent Owner’s argument that identifying an application identifies the computer running the application is persuasive, and the testimony of Dr. Jakobsson is credible on this issue. Jakobsson Decl. ¶¶ 157–163; Jakobsson Supp. Decl. ¶ 54. For example, Dr. Jakobsson testifies that the “user agent” field identifies a particular web browser, not a computer, and therefore does not “reveal the requesting computer’s private IP address.” Jakobsson Supp. Decl. ¶ 54. We find further support for this in Dr. Medvidovic’s testimony. See Ex. 1022, 129:14–130:3 (“Q. In our example where the user agent identifies the browser Internet Explorer 6.1, that doesn’t identify a computer, right? A. [by Dr. Medvidovic] That does not identify the computer.”) In sum, for the reasons given, we find that a person of ordinary skill would have been motivated to combine the teachings of Sikdar and RFC 2616 and Sikdar and Wright with a reasonable expectation of success.” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for patent owner
“supported by “objective indicia” (also called “secondary considerations”) of non-obviousness, including long-felt need, failure of others, and skepticism by experts in the industry. PO Resp. 41–44. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Before reaching a decision on obviousness of claim 7, we must weigh these secondary considerations. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075–76 (Fed. Cir. 2012). “The patentee bears the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). To determine whether the patentee has met that burden, we consider the correspondence between the objective evidence and the claim scope. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citation omitted). We concluded, in our Final Written Decision, that Patent Owner had failed to meet its burden. FWD 51–54. We agreed with Petitioner that Patent Owner had failed to establish the required nexus to its claims. Id. at 52–53. We agreed also that Patent Owner had not provided convincing evidence supporting the existence of such objective indicia. Id. at 53. We find that, for the reasons given in our Final Written Decision, which we adopt for this Final Written Decision on Remand, Patent Owner’s evidence of secondary factors is insubstantial and unconvincing, and we therefore give it minimal weight in considering the obviousness of the challenged claims.” slip op. at 29
Patent outcomesUS 9,756,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,756,079 - Trend Micro Inc. v. Cupp Computing AsSome claims unpatentablePTAB · Apr 14, 2023 · IPR2019-00561 · APJ Thomas L Giannetti · IPR · Remand
On remand, claim 16 was held unpatentable as obvious over APA and Sikdar; claim 7 was not shown unpatentable over Sikdar and Wright.
RulingsRemand decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner contended “[a] person of ordinary skill in the art at the time of the alleged invention of the ’272 patent (i.e., May 30, 2007) . . . would have had a Bachelors’ degree in computer science, electrical engineering, or a comparable field of study, plus at least two years of professional experience with computer security systems and networks, or the equivalent.” Pet. 8 (citing Jakobsson Decl. ¶ 49). In our Final Written Decision, we adopted Petitioner’s description of the person of ordinary skill over an alternative formulation by Patent Owner’s expert, Dr. Medvidovic. FWD 17. However, we decided that we would reach the same result even under Dr. Medvidovic’s alternative formulation. Id. The level of ordinary skill adopted by us has not been further disputed by the parties, nor is it discussed in the Federal Circuit’s Decision. We therefore apply the same formulation for the reasons given in our Final Written Decision.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner asserts that in Petitioner’s analysis of claim 16, “Petitioner reads out any distinctions between ‘at least a subset’ and ‘a subset.’” PO Resp. 45. Petitioner responds that “[t]he Board should reject Patent Owner’s argument that ‘the subset’ must be a ‘proper subset,’ i.e., a set that is less than the full set of outgoing data.” Pet. Reply 5. Petitioner cites dictionary definitions and other additional authorities to support this conclusion. Pet. Reply 5–6 (citing, e.g., Exs. 1022, 1023, 1024). For example, A Dictionary of Computing defines “subset” as “[a] set T whose members are all members of S,” and contrasts this with a “proper subset.” Ex. 1023, 3. Petitioner further points out that the antecedent basis of “at least a subset” for “the subset” in claim 16 supports its construction. Pet. Reply 6. In our Final Written Decision, after considering Petitioner’s evidence and the language of the claim, we found that the references to “subset” in claim 16 should be construed broadly enough to read on providing any portion of the outgoing data, up to and including all the data, and not a proper subset. FWD 24–25. For the reasons summarized above and those given in our Final Written Decision, we find that the term “subset” in claim 16 does not limit the claim to a “proper subset,” i.e., the claimed subset may include all the members of the set.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Applying the Federal Circuit’s “flexible” standard, we find that for the reasons given that Petitioner demonstrates a motivation to combine Sikdar and the APA, as proposed by Petitioner, with a reasonable expectation of success. We disagree with Patent Owner’s arguments and find that a person of ordinary skill would have been motivated to add Sikdar’s NAT/PAT capability to the prior art network system of Figure 18, disclosing a software-based firewall. Pet. 55–58; Pet. Reply 23–25. As Petitioner points out, Sikdar’s RSP “does not include any NICs . . . , which are a separate hardware component.” Pet. Reply 24. We agree with Petitioner that Patent Owner’s argument is not convincing. More importantly, however, Patent Owner’s argument fails because in Ground 3, Petitioner does not propose combining “any device containing two NICs with the APA.” Id. Petitioner proposes combining “the RSP’s NAT/PAT functionality with the APA.” Id. at 24–25 (citing Pet. 55–58) (emphasis added). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“non-obviousness, including long-felt need, failure of others, and skepticism by experts in the industry. PO Resp. 50–52. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Before reaching a decision on obviousness of claim 16, we must weigh these secondary considerations. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075–76 (Fed. Cir. 2012). “The patentee bears the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). To determine whether the patentee has met that burden, we consider the correspondence between the objective evidence and the claim scope. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citation omitted). We concluded, in our Final Written Decision, that Patent Owner had failed to meet its burden. FWD 47–50. We agreed with Petitioner that Patent Owner had failed to establish the required nexus to its claims. Id. at 49. We agreed also that Patent Owner had not provided convincing evidence supporting the existence of such objective indicia. Id. We find that, for the reasons given in our Final Written Decision, which we adopt for this Final Written Decision on Remand, Patent Owner’s evidence of secondary factors is insubstantial and unconvincing, and we therefore give it minimal weight in considering the obviousness of the challenged claims.” slip op. at 40
Patent outcomesUS 8,365,272 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,365,272 - Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentablePTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand
Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.
RulingsRemand decision- RemandOther
“Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18
- Expert testimonyOther
“We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26
Patent outcomesUS 5,796,183 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,796,183 - Microsoft Corporation v. Proxyconn, Inc.All claims unpatentablePTAB · Dec 9, 2015 · IPR2012-00026 · APJ Thomas L Giannetti · IPR · Remand
On remand, claims 1, 3, 6, 7, 9, 10, 22, and 23 are unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.
RulingsRemand decision- RemandOther
“permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Finally, we note that persuasive evidence of a rationale to combine DRP and Mattis is found in the Long Declaration. IPR2013-00109, Ex. 1013, 10–16. Proxyconn does not challenge this evidence. We, therefore, conclude that, taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 6, 7, and 9 of the ʼ717 patent would have been obvious over DRP and Mattis and are not patentable.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Unpatentable
“Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device.” slip op. at 17
Patent outcomesUS 6,757,717 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,757,717 - Microsoft Corporation v. Proxyconn, Inc.All claims unpatentablePTAB · Dec 9, 2015 · IPR2013-00109 · APJ Thomas L Giannetti · IPR · Remand
On remand, the Board held claims 1, 3, 6, 7, 9, 10, 22, and 23 unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.
RulingsRemand decision- RemandDecided for petitioner
“permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Unpatentable
“dispute this assertion. Instead, Proxyconn asserts that it should prevail simply because the Board’s decision was based on a “rejected claim construction.” PO Remand Br. 8. We are not persuaded by this argument. Instead, we are persuaded that Perlman meets the “receiver” and “sender” limitations of the claims, even under Proxyconn’s construction of “sender/computer” and “receiver/computer.” Perlman discusses an illustrative network embodiment using routers. See supra. A router is an intermediary device and, under Proxyconn’s construction, might not be considered a “sender” or “receiver.”7 Nevertheless, we agree with Microsoft that the disclosure of Perlman is not confined to networks using routers, but expressly applies to “any type of distributed system requiring efficient synchronization of the contents of data bases stored on nodes of a computer network.” Pet. Remand Br. 8; Ex. 1003, col. 8, ll. 57–60. Perlman’s express disclosure of nodes is referred to in Microsoft’s Petition at pages 32–33, 35, 37, and 39. And Proxyconn’s Patent Owner Response states, “Perlman discloses a sending node that broadcasts a database identifier to a plurality of receiver nodes, and updates the receiver nodes so that all of the nodes are synchronized.” PO Resp. 29.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device. Proxyconn contends that “at no point” did Microsoft attempt to show that Santos had a “receiver/computer” without intermediaries. PO Remand Br. 13. This argument is unavailing. Microsoft contended in its claim charts accompanying the Petition that Santos provided such a receiver/computer. As stated in the claim charts: “Receiver implementation is an ‘Intel-based PentiumII’ computer running Linux Operating system (Santos § 3.4, ¶ 1).” Ex. 1001, 6. We, therefore, conclude that taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 22 and 23 of the ʼ717 patent are anticipated by Santos.” slip op. at 17
Patent outcomesUS 6,757,717 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,757,717
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.