- Facebook, Inc. / Instagram, LLC et al. v. Blackberry LimitedInstitution deniedPTAB · Nov 5, 2019 · IPR2019-00923 · APJ Jacqueline T Harlow · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 15, 16, 19, 23, 24, or 27 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the evidence and arguments of record, for reasons discussed below, we deny the petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of invention of the ’961 patent “would have possessed at least a bachelor’s degree in electrical engineering or computer science (or equivalent degree) and at least two years of experience with computer-based cryptographic techniques.” Pet. 6 (citing Ex. 1002 ¶¶ 11–13). Patent Owner does not address the requisite level of skill in its Preliminary Response. For purposes of this Decision, we adopt Petitioner’s undisputed definition of the level of ordinary skill in the art, as it is consistent with the” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“this proceeding. Pet. 16–17; Prelim. Resp. 14–15. The parties note, however, that in response to their dispute in the related district court action concerning the construction of the claim term “reducing mod q,” the district construed that term to mean “computing the remainder of dividing a value by q.” Prelim. Resp. 14 (citing Ex. 2002, 31–35); Pet. 16–17. We have considered the claim construction analysis and ruling of the district court, and agree that for purposes of this Decision, the district court’s interpretation of “reducing mod q” as meaning “computing the remainder of dividing a value by q” is reasonable. As such, we adopt that interpretation here. We note, however, that our conclusion that Petitioner has not established a reasonable likelihood of prevailing as to any of the challenged claims does not turn on any particular construction of “reducing mod q.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not adequately explain, in view of the gaps in DSS and Rose, why an ordinarily skilled artisan would have sought to modify DSS by applying Rose’s technique for eliminating modulo bias in basic random number generation to accept or reject a hashed random number, or to iteratively generate and hash a new random number after each rejection. Instead, Petitioner presumes, without sufficient explanation, that because Rose identifies a solution for addressing the modulo bias problem in basic random number generation, and because it was known at the time of invention of the ’961 patent that performance of a modulo operation on the output of a hash function, as disclosed by DSS, could create a bias towards lower values, an ordinarily skilled artisan would “have been motivated to use the technique in Rose to maintain a uniform distribution of random numbers over the range specified by q, resulting in a cryptographically stronger key k, in turn increasing the strength of the resulting digital signature scheme.” Pet. 43–44 (emphasis omitted). Petitioner’s presumption is insufficient, however, to support institution of inter partes review. For example, Petitioner’s inchoate explanation does not adequately address why an ordinarily skilled artisan would have understood that Rose’s method for avoiding modulo bias in basic random number generation––absent any hashing––would have been transferable to mitigate modulo bias in the selection of an output of a hash” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 7,372,961 - Apple Inc. v. Qualcomm Inc.Rehearing deniedPTAB · May 23, 2019 · IPR2018-01270 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving institution denied because Apple did not show Samsung disclosed the claimed notification and power-button silencing during an incoming call.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify the matters misapprehended or overlooked, and where each matter was addressed in a motion, opposition, or reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (2) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1006, 32)). We found the cited portions of Samsung to describe (1) that if there was no call already in progress, the user could silence an incoming call with the power button, but neither the in-use information nor call waiting would cause the claimed notification, and (2) that if a call was already in progress, call waiting would display a notification for a new call, but there was nothing to indicate that the user could silence a ‘ring,’ or even the call waiting alert, using the power button. See Decision 16. In other words, the “in-use” notification was insufficient because it was not shown to be displayed while a call was incoming, and the “call waiting” notification was insufficient because it was not shown to be employed at a time a user could use the power button to silence a “ring.”” slip op. at 4
- Strike new argumentNew argument disregardedDenied
“New Evidence Petitioner asserts that the “new arguments provided in [the] Request [are] appropriate” because “Petitioners are permitted in a request for rehearing to address inaccurate characterizations that they may not be able” slip op. at 7
- BurdenDecided for patent owner
“distinction,” and the reference need not describe a “separate during incoming calls state.” Instead, the problem is that Samsung’s in-use display is described as showing information that one of skill in the art would expect to be shown after a call has been answered (i.e., the timer), and Petitioner failed to establish that the information would have been displayed before a call was answered. In this proceeding, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). With no showing that the in-use information would be displayed before the call was answered, Petitioner did not carry its burden.” slip op. at 4
NonePatents in suitUS 9,203,940
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