- Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01131 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 13 and 17–19 are unpatentable under § 103 over the specified combinations of Van Dok, Sinivaara, Werndorfer, and the additional references.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Traynor obtained his undergraduate degree 1 year before the critical date he lacks the requisite 2 years of industry experience as of the critical date. Mot. 3–4. Our Consolidated Trial Practice Guide provides that “[a]n expert training, or education to testify in the form of an opinion.” Consolidated Trial Practice Guide 74 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated 34 (citing Fed. R. Evid. 702). Further, the Trial Practice Guide also provides that “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Id. (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F. 3d 1356, 1363–1364 (Fed. Cir. 2008)). We find that Dr. Traynor is qualified in the pertinent art. Dr. Traynor received his Bachelor’s degree in Computer Science in May 2002, his Masters’ degree in Computer Science in May 2004, and his Ph.D. in Computer Science in 2008. Ex. 1003 ¶ 2; Ex. 1004, 5. He has served as a professor since 2008 and is currently a Professor in the Department of Computer and Information Science and Engineering at the University of Florida. Id. at ¶ 3. He has over 8 years of industry experience and has published 90 articles in the areas of information security, mobility, and networking. Ex. 1003 ¶¶ 6–7, 9–11, Ex. 1004 12–24, 31. We note that Patent Owner did not depose Dr. Traynor or ask him about his post undergraduate experience before the critical date.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“1003 and Exhibit 1103, asserting that they are inadmissible based on FRE 702, 703, and 704, and improperly contain hearsay based on FRE 802, 803, 804, 805, 806, and 807. Mot. 2–3. Patent Owner’s contentions regarding admissibility of Dr. Traynor’s declarations and hearsay contained in the declarations all stem from Dr. Traynor’s alleged lack of industry experience sufficient to establish ordinary skill in the art as of the critical date of the ’837 patent. See Mot. 3–8; Opp. Reply 2–5. Petitioner opposes, arguing that (1) Dr. Traynor need not be a person of ordinary skill in the art as of the critical date (December 24, 2003); (2) Dr. Traynor is highly qualified in the pertinent art; and (3) Patent Owner’s objections to the declarations were not timely filed and lacked particularity. Opp. 1–2. We are not persuaded by Patent Owner’s arguments that because” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet. 5 n.2; Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the prosecution history.” Id. at 5 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11 We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 7,894,837 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - PTAB · Dec 14, 2022 · IPR2022-01309 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, and granted Volkswagen’s motion to join the Apple IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the Apple IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. We find that the merits of the Petition warrant institution.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Having considered the issues, we agree with Petitioner that joinder will promote efficiency, because joinder will reduce the number of parallel challenges to the ’392 patent. Id. at 2. We also find that, because Petitioner will participate in an “understudy role,” joinder will simplify the schedule and eliminate the likelihood of duplicative efforts without prejudice to Patent Owner. Id. at 10–12.” slip op. at 10
NonePatents in suitUS 10,193,392 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless and determined claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 unpatentable after the Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentFwd all claims unpatentableGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner addressed the present case and stated on the record that they are not contesting a final written decision or adverse judgment in the related cases in which Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that” slip op. at 2
NonePatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01126 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against the Patent Owner and determined claims 22, 23, and 31–40 unpatentable based on abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentFwd all claims unpatentableGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner stated on the record that they are not contesting a final written decision or adverse judgment in the related cases that Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if the Board determines [Petitioner] met their burden of proof” slip op. at 2
NonePatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01125 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless and determined claims 2–4, 11–14, 22, 23, and 31–33 unpatentable based on abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner stated on the record that they are not contesting a final written decision or adverse judgment in the related cases that Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if the Board determines [Petitioner] met their burden of proof” slip op. at 2
NonePatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01124 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless as to claims 1, 5–10, 17–19, and 36–40, determining those claims unpatentable after Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner stated on the record that they are not contesting a final written decision or adverse judgment in the related cases that Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if the Board determines [Petitioner] met their burden of proof” slip op. at 2
NonePatents in suitUS 7,292,870 - Canon, Inc. / Canon U.S.A., Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00965 · APJ John A Hudalla · IPR · Final written decision
Claims 1–9, 12, 13, 16, 18–34, 36, and 37 are unpatentable as obvious over Färber and Dalby, Färber, Dalby, and Morishita, or Färber, Dalby, and Mashimo.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Reader, Petitioner contends a person of ordinary skill in the art (or “POSITA”) “would have had a bachelor’s degree in electrical engineering or computer science, or an equivalent degree, and two to three years of experience in the field of video coding.” Pet. 7 (citing 4 The trial record does not include any evidence of secondary considerations of nonobviousness. Ex. 1002 ¶¶ 75–77). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’714 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not agree with Patent Owner that Petitioner’s claim construction position is deficient. Throughout this proceeding, Petitioner has maintained that no construction of the claims is necessary to resolve the asserted grounds of unpatentability. See Pet. 14–15; Pet. Reply 5. This comports with the discussion of claim construction in our Trial Practice Guide, which contemplates that “a petitioner may include a statement that the claim terms require no express construction.” Patent Trial and Appeal Board Consolidated Trial Practice Guide at 44 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Given Patent Owner has proposed no claim constructions of its own, and given that no issues in the fully developed trial record turn on claim interpretation, we find that Petitioner has satisfied the requirement of identifying “[h]ow the challenged claim is to be construed.”6 37 C.F.R. § 42.104(b)(3). We also disagree with Patent Owner that Petitioner’s claim constructions here must be the same as those that it put forth in the parallel litigation. Petitioner is correct that the posture of different cases may or may not require claim interpretation. For example, Petitioner posits that claim interpretation was necessary in the district court to consider certain infringement issues, whereas no claim construction is necessary here to resolve issues of patentability. See Pet. Reply 7. Although we need not 6 To address Patent Owner’s companion argument, we also find that Petitioner has satisfied the requirement of identifying “[h]ow the construed claim[s are] unpatentable.” 37 C.F.R. § 42.104(b)(4). Our analysis of Petitioner’s unpatentability grounds is set forth in detail below. delve into the court’s consideration of infringement,7 we agree with Petitioner’s premise that the need to interpret claim terms varies depending on the posture of the case. And, as discussed below, no claim construction is necessary to resolve the issues in this inter partes review. Thus, based on the particular circumstances of this case, we see no impropriety in Petitioner’s different claim construction positions across the two forums. For these reasons, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Regarding Petitioner’s rationale for combining Färber and Dalby, Petitioner notes that Dalby expressly mentions and builds upon the teachings of Färber. Pet. 20 (citing Ex. 1002 ¶¶ 351–355; Ex. 1004, 2:22–30). Petitioner further contends that Dalby provides solutions to a problem recognized in Färber, namely that “a mismatch error can result from the difference of a reconstructed P-frame and its corresponding I-frame.” Id. at 20–21 (citing Ex. 1002 ¶¶ 128, 129, 352; Ex. 1003, 3). Petitioner additionally contends that both references utilize the same video compression standard, “which demonstrates that they can successfully be used together and predictably combined, without requiring undue experimentation.” Id. at 21 (citing Ex. 1002 ¶¶ 351–355). Patent Owner does not dispute Petitioner’s reasons for combining Färber and Dalby. We are persuaded by Petitioner’s rationale for the combination because Dalby expressly mentions Färber and extends its teachings, which substantiates than an ordinarily skilled artisan would have combined the references with predictable success. See, e.g., Ex. 1002 ¶¶ 128–133, 351–355; Ex. 1004, 2:22–3:8. Petitioner has persuasively shown that the combination of Färber and Dalby teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references with a reasonable expectation of success. On the entire trial record, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over the combination of Färber and Dalby.” slip op. at 18
Patent outcomesUS 7,116,714 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,116,714 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00959 · APJ John A Hudalla · IPR · Final written decision
Claims 1–3, 6, 7, 9, and 18 are unpatentable as anticipated by Kodialam; the Board did not reach the Kodialam–AAPA obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Jeffay, Petitioner contends a person of ordinary skill in the art (or “POSITA”) would have possessed “a bachelor’s degree in computer engineering, computer science, or a related field (or its equivalent), plus at least two years of experience managing and configuring computer networks, including experience with networking protocols and network routing.” Pet. 15 (citing Ex. 1003 ¶ 54). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’781 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner notes that the parties have put forth certain terms for construction in the underlying litigation, but Petitioner contends that no terms require construction in this case. Pet. 15–16. Patent Owner also does not put forth any terms for construction. PO Resp. 5–6. We determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner contends that Petitioner fails to cite any express teaching of the “identifying” step in Kodialam, and, instead, “the Petition relies solely on Dr. Jeffay’s testimony in an attempt to fill the evidentiary gap.” PO Resp. 14–15 (citing Pet. 23–24; Ex. 1003 ¶ 67); PO Sur-reply 13. Patent Owner further contends that Dr. Jeffay’s supporting testimony “is untethered to any supporting evidence.” PO Resp. 15; see also PO Sur-reply 14–16 (similar arguments). Patent Owner further disputes Petitioner’s analysis to the extent that Dr. Jeffay references critical links that are used for the generation of a multicast routing tree, not a unicast transmission. PO Resp. 16–17 (citing Ex. 1004, Abstr.). Contrary to Patent Owner’s arguments, however, Petitioner cites directly to Kodialam in conjunction with Dr. Jeffay’s testimony. In particular, Petitioner cites Kodialam’s disclosure of solving “the maximum multicast flow problem” by first computing “critical links.” Pet. 23–24 (quoting Ex. 1004, 10:49–57). Petitioner also cites Kodialam’s claim 7 (id. at 24), which discloses “generat[ing] the set of critical links for sets of unicast pairs, each unicast pair defined between the source and one of the plurality of receivers.” Ex. 1004, 16:62–65. These disclosures both support Dr. Jeffay’s testimony and independently establish that Kodialam describes identifying unicast traffic requirements, because Kodialam’s system identifies and prioritizes critical unicast links. See Ex. 1004, 10:49–57, 11:9–26, 16:62–65. For similar reasons, these disclosures also describe the identification of the “first traffic configuration” of unicast packet traffic. See id. Thus, we are persuaded that Kodialam discloses the “identifying” step of claim 1.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Petitioner contends Kodialam qualifies as prior art under 35 U.S.C. § 102(e) based on its filing date. Pet. 16–17. Patent Owner does not dispute the prior art status of Kodialam. We have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. We determine that Kodialam qualifies as prior art under 35 U.S.C. § 102(e) because Kodialam’s filing date of September 29, 2000, is before the earliest effective filing date of the challenged claims, which is November 21, 2003. Ex. 1001, code (22); Ex. 1004, code (22).” slip op. at 12
Patent outcomesUS 7,382,781 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,382,781 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 18, 2022 · IPR2021-00769 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 2, 7–13, and 15 are unpatentable as obvious over Brockners and Lasserre, both alone and in further view of RFC 3386.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose a definition for a POSITA but contends that “Petitioner fails to prove unpatentability even if the Board were to apply Petitioner’s proposed definition.” PO Resp. 2. We adopt and apply Petitioner’s definition of the level of ordinary skill in the art at the time of the claimed invention because, based on the record, this proposal appears to be consistent with the ’656 patent, the asserted prior art, and is supported by the testimony of Dr. Weissman. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “no express constructions are necessary because the claims encompass the prior-art mappings under any construction consistent with Phillips.” Pet. 20. Although Patent Owner also does not provide any express construction, in its Sur-Reply, Patent Owner contends that, according to the recited language of claim 12, the “learning” step “must be based on communication between the first and third provider edge nodes,” and “such communication must occur while the first provider edge node is functioning as the working node.” See PO Sur-Reply 1. Further, Patent Owner contends that “all challenged claims require the ‘first provider edge node’ to be ‘a protection node’ (as opposed to a ‘working node’) when it sends the flush request.” Id. at 4. We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Rather, we address the “learning” step and “first provider edge node” based on the parties’ explicit arguments with respect to the prior art references of Brockners and Lasserre.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As Petitioner explained during oral arguments, in Lassere, once provider edge router PE2 receives the packet, it will know that it received it over tunnel 201 and that the return path for tunnel 201 is tunnel 102, and it then creates a MAC address entry in the MAC table to reach M1 over tunnel 102. Tr. 8:13–16 (“a table that says, look, if I want to reach M1, I know I can reach it over tunnel 102, that that’s the tunnel that can take me to that MAC address 1”); see also Ex. 1005, 12. Petitioner contends that “[t]he PE learns both the MAC address and a tunnel for associating to the equipment,” and that “[t]he claims require learning a MAC address for the first customerpremises equipment,” wherein “we can see that the entry stored a MAC address, M1, that is for the first customer-premises equipment, A1.” Tr. 12:7–11. On the complete record before us, we find availing Petitioner’s contention that N-PE 3 possesses MAC address entry M1 that is for first customer-premises equipment, A1, by associating M1 with tunnel 102, identifying A1 as the source behind N-PE 1. As Petitioner points out, similar to Lasserre, the description of “MAC address learning that the [’656] patent consistently gives” is, with a broadcast message received by a provider edge node, the provider edge node “associates the source MAC address within [the broadcast message] with a tunnel that is leading to that equipment.” Tr. 11:2–5; see also Ex. 1001, 2:67–3:6. Having reviewed Petitioner’s arguments and supporting evidence in the complete record, notwithstanding Patent Owner’s arguments to the contrary, we determine Petitioner has demonstrated by a preponderance of the evidence that the combination of Brockners and Lasserre teaches 1) “a third provider edge node possessing a media access control (MAC) address entry for the first provider edge node,” as recited in claim 1; and 2) “leading, with the third provider edge node, a first media access control (MAC) address for the first customer premises equipment, based on said communicating,” as recited in claim 12.” slip op. at 23
Patent outcomesUS 8,284,656 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,284,656
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.