- Apple, Inc. v. Omni Medsci Inc.All claims unpatentablePTAB · Feb 14, 2025 · IPR2021-00453 · APJ Brian J Mcnamara · IPR · Remand
On remand, the Board determined claims 1–23 unpatentable, finding claims 3–6 and 8–14 obvious under the asserted combinations and leaving the prior findings on other claims intact.
RulingsRemand decision- RemandOther
“No appeal was taken as to claims 1, 2, 7, and 15–23. Consistent with the Federal Circuit’s Mandate, we have reviewed the merits and determine 3–6 and 8–14 are unpatentable, and recognizing that all other claims have previously been determined to be unpatentable, we determine that claims 1–23 are unpatentable.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Our mandate is to consider the argument the Court determined we did not consider in the Petitioner Reply, which argument, as each party acknowledges, both parties had the opportunity to discuss in the briefs that are in our current record. Under the circumstances, we determine that no additional briefing is required to carry out that mandate.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In our Final Decision, we determined that the term “identify an object” in claims 3 and 8 is distinguished from the term “detect an object,” e.g. as in claim 1. Final Dec. 8–10. The Court affirmed our construction of “identify an object” to mean “to recognize or establish an object as being a particular thing.” Fed. Cir. Dec. 10. The Court remanded, however, for further consideration of a “properly raised” argument Petitioner advanced in the Petitioner Reply with respect to our construction, referred to by the Federal Circuit as “the alternative argument.”. Id. at 2, 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner counterargues that it is not required to show why a person of ordinary skill would have considered every permutation of these references together and that it provided specific reasons for including features of Isaacson into Lisogurski’s device. Pet. Sur-reply 24–25. According to Petitioner, a person of ordinary skill would have had reason to incorporate Isaacson’s sensor (an arrangement of LEDs and detectors) into Lisogurski’s device, which taught that any known sensor layout could be used. Id. (citing Ex.1011, 17:39–45; Ex.1003 ¶¶ 239–240). Petitioner further argues that the ordinarily skilled artisan would have looked to Isaacson because it discloses a known arrangement for that the sensor component of Lisogurski’s device, and because it also taught solutions to potential problems identified in Lisogurski (e.g., with skin pigmentation). Id. (citing Pet. 68–69; Ex.1003 ¶ 243; Ex.1063, 7:59–62, Fig. 1).” slip op. at 9
Patent outcomesUS 10,517,484 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,517,484 - Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the Board did not reach the alternative Kates-505 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 13–14 (citing Ex. 1002 ¶ 44–47). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’887 patent and the prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“sensed condition outside a predetermined range.” Patent Owner’s proposed construction of the second wherein clause replaces the word “suspended” with “that would otherwise occur is stopped.” PO Resp. 8–9 (“emphasis omitted”). This phrase is not part of claim 1. Nonetheless, adopting Patent Owner’s proposed construction could potentially render the second wherein clause superfluous because the first wherein clause does not require transmission of the most recent reading to occur when the change is within the predetermined range. Consequently, the language of claim 1 does not require or suggest Patent Owner’s proposed construction.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“recent reading of the indicator stored in the memory during a period of a transmission interval in response to detecting a change in the sensed condition outside a predetermined range.” Ex. 1001, 14:63–67. This limitation also requires that “during the period of the transmission interval” the transmission “is suspended in response to detecting a change in the sensed condition within the predetermined range.” Id. at 14:67–15:4. Petitioner, therefore, must show that Kates-711 discloses a transceiver configured to transmit information or suspend transmission of the information during a “period” within a “transmission interval.” For the recited “transmission interval,” Petitioner contends that Kates’s “periodic intervals of ‘periodic monitoring’ is a [1.e] ‘transmission interval,’ during which there is a [1.e] ‘transmission period’ that includes a ‘report block.’” Pet. Reply 9. We agree with Petitioner for the following reasons. Kates describes the process shown in Figure 7 as follows: FIG. 7 is a flowchart showing one embodiment of operation of the sensor unit 102 wherein periodic monitoring is provided. In FIG. 7, a power up block 701 is followed by an initialization block 702, After initialization, the sensor unit 102 enters a low-power sleep mode. If a fault occurs during the sleep mode (e.g., the tamper sensor is activated), then the process enters a wake-up block 704 followed by a transmit fault block 705. If no fault occurs during the sleep period, then when the specified sleep period has expired, the process enters a block 706 where the sensor unit 102 takes a sensor reading from the sensor(s) 201. The sensor data is subsequently sent to the monitoring computer 13 in a report block 707. After reporting, the sensor unit 102 enters a listen block 708 where the sensor unit 102 listens for a relatively short period of time for instructions from monitoring computer 708. If an instruction is received, then the sensor unit 102 performs the instructions, otherwise, the process returns to the sleep block 703. Ex. 1004, 15:50–65. Based on this description of Figure 7, we find that Kates’s report block 707 corresponds to the recited “a period of the transmission interval” because it is a period of time when “sensor data is . . . sent to the monitoring computer.” Ex. 1004, 15:61. Further, block 707 is within an interval of “periodic monitoring” i.e., the process loop shown in Figure 7 beginning at block 703 and comprising steps 703, 706, 707, 708, 709, 710 and back to block 703. See also Ex. 1052 ¶ 22 (Dr. Neikirk testifying “each of [Kates’s] periodic intervals during which the ‘periodic monitoring’ process occurs is a ‘transmission interval’ . . . and the report block’ that occurs within this process is a transmission period.” (citations omitted)).” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37
Patent outcomesUS 7,746,887 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,746,887 - Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2023-00626 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the alternative Kates-505 grounds were not reached.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For these reasons, in order to resolve the present controversy, we determine that the plain and ordinary meaning of “suspended”, as used in the challenged claims, encompasses both where a transmission that would otherwise occur is suspended by an action such as overriding a flag and where a transmission is not made because there is no change in an indicator or a change does not exceed a limit. Upon review the parties’ respective contentions, we determine that no other express constructions of any other claim term is required for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37
- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION12 Weighing the competing evidence and testimony, we determine that Petitioner establishes by a preponderance of the evidence that claims 1, 3–8, 14, 15, and 18 of the ’887 patent are unpatentable.” slip op. at 46
Patent outcomesUS 7,746,887 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,746,887 - Copeland Comfort Control LP v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2023-00624 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–5, 7–11, 13–16, and 20–21 are unpatentable: claims 1–5, 7–11, and 20–21 over McFarland, and claims 13–16 over McFarland and Kates-089.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Claim 1 recites “a multi-sensor package configured to detect a plurality of variables and generate sensor data for each detected variable.” Ex. 1001, 10:46–48. Both parties agree that a “multi-sensor package” is a single packaged device with multiple sensors, not a group of individual sensors. See PO Resp. 6; Pet. Reply 2. Claim 1 does not recite a multi-sensor package with “multiple operational sensors.” Patent Owner does not explain the difference between operational sensors and sensors “configured” as recited in claim 1 or why claim 1 should be construed as requiring an “operational” limitation that does not appear in the claim. Consequently, a requirement that the sensors comprising the package be “operational” is neither required by claim 1 nor suggested by the language of claim 1.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 10–11 (citing Ex. 1002 ¶¶ 46–49). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. We apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’282 patent and the prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“McFarland discloses an exemplary sensor 209 that “is configured as any of a temperature sensor, humidity sensor, fire sensor, pressure sensor, smoke sensor, occupancy sensor, air quality sensor, gas sensor, O2, CO2, or CO sensor, accelerometer, velocity sensor, [or] combinations thereof” and “may be . . . micro-mechanical sensors . . . or larger sensors for sensing any condition or parameter.” Ex. 1027 ¶ 43 (emphasis added). Patent Owner submits that paragraph 43 of McFarland describes “a device . . . that sense[s] conditions, parameters and/or events such as an environmental condition in a building.” PO Resp. 28 (emphasis added). Based on the foregoing, we find that McFarland teaches “a multi-sensor package configured to detect a plurality of variables.” Ex. 1002 ¶ 72 (“sensor 209 may be configured to detect multiple different variables including temperature, humidity, and other variables”); Ex. 1027 ¶ 43. McFarland further discloses “sensor 209 generates information or data related to the sensed or monitored condition” and “output as one or more signals that may be read by the processor 214.” Ex. 1027 ¶ 43. McFarland further discloses that “information may be generated in response to a physical stimulus such as light, sound, pressure, heat, magnetism, motion, and/or acceleration” that “may be detected as a result of sensing or monitoring the conditions or parameters.” Id.; see also id. ¶ 44 (“A signal generated by the sensor 209 may be an indicator of the sensed condition.”). McFarland also discloses that “processor 214 implements a control process for the device 207” that “may be implemented based on a signal that is read from and/or provided by the sensor 209, such as a measured value of a parameter, an indicator of a sensed condition and/or status of an event.” Id. ¶ 39. Thus, we find McFarland teaches that sensor 209 “generate[s] sensor data for each detected variable.” Ex. 1002 ¶ 74 (“For each condition that it monitors, the sensor generates and outputs sensor data for each measured variable in the form of ‘a measured variable’ or ‘indicator.’” (citing Ex. 1027 ¶¶ 39, 45, 47)). For the foregoing reasons and after reviewing Petitioner’s evidence in light of Patent Owner’s contentions, we find that McFarland teaches this limitation.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Motivation to Combine/Reasonable Expectation of Success Petitioner contends that McFarland discloses that a wireless automation device wakes up and enters a standby or sleep mode in response to a report instruction. Pet. 46. Petitioner acknowledges that McFarland “does not explicitly state that the ‘report instruction’ includes a ‘wake-up command’ or describe how the device is instructed to return to a ‘sleep’ mode between reporting intervals.” Id. (citing Ex. 1027 ¶¶8, 18, 48, 62). Petitioner next contends that Kates-089 “teaches that such a ‘report instruction’ comprises a ‘wake-up command,’ and that a controller issues a ‘standby mode’ instruction (i.e., a ‘power down command’).” Id. (citing Ex. 1029 ¶¶ 78, 82, 86). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify McFarland with” the teachings of Kates-089 “to advantageously facilitate reporting data both periodically and in response to commands while conserving power via ‘wake-up’ and ‘standby’ (i.e., power-down) commands.” Id. (citing Ex. 1002 ¶ 147; Ex. 1027 ¶ 62; Ex. 1029 ¶¶ 40, 74–75, 82, 86); id. at 47 (arguing that an ordinarily skilled artisan in light of Kates-089 “would have been motivated to modify McFarland’s ‘report’ instruction to include a wake-up command” (citing Ex. 1002 ¶ 149)) (emphasis omitted). Petitioner further contends that an ordinarily skilled artisan would have been motivated to combine McFarland and Kates-089 “to save power consumed during, e.g., the 99.9% of the polling interval when the device may otherwise be unnecessarily turned on.” Id. at 48 (citing Ex. 1002 ¶ 150). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success “applying Kates-089’s wake-up and power-down command teachings to McFarland’s wireless automation device” because “McFarland already teaches that the wireless automation device wakes up and powers down in response to certain commands[] and such commands were well understood.” Pet. 48 (citing Ex. 1002 ¶ 151; Ex. 1005 ¶ 32; Ex. 1027 ¶¶ 8, 18, 48, 62; Ex. 1032, 12:48–54; Ex. 1033, 12:16– 22) (emphasis omitted). Patent Owner does not address motivation to combine or reasonable expectation of success for claim 13. See PO Resp. 26–35. We have reviewed Petitioner’s evidence and contentions and find that” slip op. at 45
Patent outcomesUS 8,224,282 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,224,282 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00378 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–8 are unpatentable under § 103(a): claims 1–4 over Drell, Knappe, and Voois, and claims 5–8 over Drell, Knappe, Voois, Elliott, and VPN Textbook.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 8. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 7 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.8 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))). Moreover, Petitioner’s proposed construction of “mixed data stream” is not inconsistent with the district court’s construction of “first mixed data stream” and “second mixed data stream,” in that both constructions include at least audio data and video data, and Patent Owner does not argue otherwise.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded that the combination of Drell and Knappe teaches limitation [1.1]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [1.1], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.10 See PO Resp. 16–18. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. Patent Owner also fails to explain how the alleged “fundamental” differences in Knappe and Drell have any bearing on how they are used in the proposed combination. See PO Resp. 16–18; Sur-reply 3–4. Rather, Patent Owner’s argument merely points out alleged differences between the references, while essentially ignoring their commonalities. To the extent Patent Owner is arguing that it would not have been obvious to physically combine Drell and Knappe or bodily incorporate them into each other,11 Petitioner states, with supporting testimony from Dr. Houh, that the 10 Although Patent Owner cites to paragraphs 21 and 22 of Mr. Dye’s Declaration (PO Resp. 17), this testimony does not support the arguments for which it is cited. In the Sur-reply, Patent Owner clarifies that the citation should have been to paragraph 20 of Mr. Dye’s Declaration (Sur-reply n. 1), but, as discussed below, this testimony merely repeats arguments made in the Sur-reply. See Sur-reply 4–5. 11 “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.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). proposed combination “permits, but does not require, physical incorporation of elements from Drell and Knappe.” Pet. 22 (citing Ex. 1003 ¶ 168) (emphasis added). In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 12 This is a new argument raised in the Sur-reply. However, even if we consider this argument, we do not find it persuasive for the reasons stated. (PTAB August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 23
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15” slip op. at 25
Patent outcomesUS 9,094,525 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00371 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–10 are unpatentable as obvious: claims 1, 3–7 over Knappe, Elliott, VPN Textbook, and de Moraes; claims 2, 8–10 over those references and Shepherd.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). Patent Owner’s proposed level of skill references education and experience in computer systems generally, but does not require education and experience specific to the subject matter of the ’997 patent, i.e., “audio and video telecommunications for collaboration over hybrid networks.” See Ex. 1001, 1:24–26. As Petitioner’s description of a person of ordinary skill requires some level of education and experience with the subject matter of the ’997 patent and the references, Petitioner’s description appears more applicable to the issues before us. Nevertheless, we determine that, based on the subject matter and the arguments advanced by the parties, the differences in their descriptions of an ordinarily skilled artisan is not material to the outcome of this proceeding.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. 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)). The Petition asserts no claim term requires construction for the Board to evaluate the patentability of the claims. Pet. 7–8. Patent Owner did not file a Preliminary Response. As there were no proposed claim constructions and we did not perceive a need to construe any term, in our Decision to Institute we applied the plain and ordinary meaning to the claim language. Dec. to Inst. 9.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner does not identify sufficient disclosure in the ’997 patent or other evidence to support its assertion that the term “gateway server” noted above, Patent Owner argues that in accordance with claim 1, “the gateway server establishes communication with a conferencing server’ and “is operable to use the multicast group information to enable the telephone participant to participate in the multi-participant conference.” PO Sur-reply 7 (citing Ex. 1001, claim 1). The Specification’s description of the functions performed by the appliance and its consistent reference to a “gateway” indicates that the term “gateway server” at column 4, line 60 in conjunction with VoIP server is used interchangeably with “gateway,” as the Specification does not describe any other functions of the gateway server. For example, the Specification describes that “the VoIP server communicating with a gateway to call the telephone participant.” Id. at 4:33–34. According to Patent Owner “the simple gateway of Knappe is incapable of these complex operation. Id. (citing Ex. 1006, 4:29–57). We address the implications of the parties’ arguments further in our analysis of the claims.” slip op. at 13
- Expert testimonyPatent owner expert discountedOther
“Patent Owner states that “Mr. Dye’s testimony is not offered as an inventor per se, but rather that of a person of ordinary skill, from whose vantage point the inventions must be understood.” PO Sur-reply 1 (citing, Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1339–1340 (Fed. Cir 2010). Mr. Dye characterizes himself as “an expert in network technologies.” Ex. 2001 ¶ 2. As Patent Owner relies on Mr. Dye’s testimony as that of a person of ordinary skill, it is not clear whether Patent Owner asserts that Mr. Dye is also offered as an expert witness. 6 U.S. Patent No. 7,281,058 (Ex. 1034). discretion in limiting inventor testimony to factual testimony that did not require expert opinion.” Id. In Verizon the court cited Kuhmo Tire, Ltd. v. Carmichael, 526 U.S. 137, 152 (1999) for the proposition that “the trial judge must have considerable leeway in deciding in a particular case how to go about determining whether expert testimony is reliable.” As an inventor of the claimed subject matter whose testimony is offered as that of a person of ordinary skill, we weigh Mr. Dye’s opinion testimony accordingly.” slip op. at 6
Patent outcomesUS 8,339,997 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,339,997 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2022-01535 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Sourcefire.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). or implicitly in market forces; design incentives; the “‘interrelated teachings of multiple patents’”; “‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)). In determining whether a claim would have been obvious in light of the prior art, when in evidence, we consider any relevant objective evidence of non-obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of non-obviousness, may lead to a conclusion that the challenged claims would not have been obvious to one of ordinary skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Patent Owner does not present evidence of such objective considerations.4 We analyze the asserted grounds of unpatentability in accordance with these principles to determine whether Petitioner has met its burden to establish unpatentability of the challenged claims by a preponderance of the evidence.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Responsive to Patent Owner proposed that, applying the plain and ordinary meaning, we construe “responsive to” to require that the claimed applying and communicating steps “must be performed based on a packet satisfying a packet-filtering rule based on network-threat indicators.” PO Resp. 6. According to Patent Owner: the “responsive to language” of the claims establishes a relationship between (i) a packet satisfying a packet filtering rule based on one or more network-threat indicators and (ii) the subsequent application of an operator that allows the packet to continue and communication of information indicating the packet was allowed to continue. Id. at 7. “Petitioner agrees that ‘responsive to’ in the claims requires that the applying and communicating steps must occur responsive to a determination extent, we do not perceive a dispute between the parties concerning the construction of “responsive to” and we apply the term’s plain and ordinary meaning, i.e., that steps recited in the claim as being performed “responsive to” a determination, e.g., “applying an operator,” are performed after the relevant determination is made.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“[u]nless the packet’s contents match the keywords of the intrusion rule, the 3D Sensor does not trigger the intrusions rule’s action (e.g., alert, drop) or generate an intrusion event.” PO Resp. 15 (citing Ex. 1004, 404–405, 761– 762, 769–770, 776–777; Ex. 2004, Goodrich Decl. ¶ 56). According to Patent Owner, a Sourcefire packet can match the IP address in a rule header but, if packet contents do not match specified keywords and argument to generate an intrusion event, a rule is not triggered. Id. (citing Ex. 1004, 404–405, 761–762, 766–767, 769–770, 776–777). At the oral hearing Patent Owner argued: So there is no disclosure in Sourcefire that you would trigger a rule responsive to satisfying that rule based on network threat-indicators. As alluded to earlier on page 16 of the demonstratives, Sourcefire tells you what the intrusion rule is. It is a specified set of key words and arguments. It is not the rule header. The rule header is only used to determine whether or not a particular rule will be applied to network traffic. You know, neither of these issues were before the Board or decided in the earlier case. slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Sourcefire. The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). or implicitly in market forces; design incentives; the “‘interrelated teachings of multiple patents’”; “‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)). In determining whether a claim would have been obvious in light of the prior art, when in evidence, we consider any relevant objective evidence of non-obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of non-obviousness, may lead to a conclusion that the challenged claims would not have been obvious to one of ordinary skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Patent Owner does not present evidence of such objective considerations.4” slip op. at 12
Patent outcomesUS 10,609,062 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,609,062 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2022-01607 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Roese, Golnabi, Huima, and Hayter; claims 3, 11, and 19 are also obvious over those references with Esbensen.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party defending against preclusion] had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (holding that issue preclusion applies in the administrative context).” slip op. at 10
- Skill levelSkill level board ownOther
“Petitioner contends that in the 01454 FWD, the Board found that “a person of ordinary skill in the relevant art in January 2013 would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 6 (citing 01454 FWD, 5). Petitioner asserts that the same level of ordinary skill in the art should apply in this proceeding. Id. (citing Ex. 1003 ¶ 37). Patent Owner also adopts the level of ordinary skill in the art from the 01454 FWD. PO Resp. 8–9 (citing 01454 FWD, 5). For purposes of this Decision, we find no reason to deviate from the Board’s previous determination and, therefore, adopt the undisputed level of ordinary skill in the art previously found by the Board in the 01454 FWD.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Second, Patent Owner argues that the challenged claims require “the caching of entire packets, not just the relevant portion of every incoming packet.” PO Resp. 11 (citing Ex. 2005 ¶ 43). Patent Owner’s declarant states that “[a] POSITA would understand that because the term packet is used to describe both the unit of data received at the network device and the unit of data that is cached, the Challenged Claims require caching the entirety of the packet received at the network device, which generally includes both header and payload data.” Ex. 2005 ¶ 43 (citing Ex. 2008, 385). We generally agree with Patent Owner’s position, that one of ordinary skill in the art would consider that caching of a packet would include caching the entire packet. We also presume that the caching of only relevant portions of a packet could be construed as caching a packet in the context of monitoring packets passing through a network device, for example, but we are persuaded that the intent of the independent claims is to cache the packets that have yet to be processed when a swapping of rule sets has been instigated, such that those packets, i.e., entire packets, can be processed under the new rule set. As such, we agree with Patent Owner that persons of ordinary skill in the art would have understood “caching the one or more packets” to mean “caching the one or more entire packets.” the claim limitation of “caching the one or more packets” to mean “caching one or more entire packets,” in the context of the ’572 Patent. As discussed in the Decision to Institute, it remains unclear what Patent Owner means by “full versions of the packets,” such that we are not persuaded that such terminology should be introduced into the construction. See Dec. to Inst. 8, 21.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. As discussed above, we are persuaded that Roese teaches that when the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 47 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 48–49 (citing Ex. 1007 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶ 176). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets” slip op. at 22
Patent outcomesUS 10,511,572 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,511,572 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Apr 15, 2024 · IPR2022-01525 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–4, 6–14, and 16–20 are anticipated by IPUG; claims 5 and 15 are obvious over IPUG; additional Altman-based grounds also apply.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Claim 1 recites that, based on comparing flow identification data with a list of identification data, a packet associated with a match is decrypted and a “corresponding action” is taken on the decrypted packet associated a result of a match, the claim does not limit the action itself, i.e., any action is a “corresponding action” as long as that action is “associated with the match [of the] data on the list.” Id. at 18:13–16. Both parties agree that the examples of such actions in the Specification are exemplary and not limiting. See, e.g., PO Resp. 11 (“[Patent Owner] did not (and does not) attempt to limit the ‘corresponding action’ to any particular action or actions.”). The ’526 patent explicitly describes “blocking” a communication as an “action.” Id. at 6:61–66. As “allowing” a packet is the opposite of “blocking” a packet, in the context of the ’526 patent, “allowing” a packet also constitutes an “action.” Nevertheless, Patent Owner attempts to exclude allowing a packet from the scope of the claimed corresponding action by arguing that the differentiation between claim elements requires construing “performing a corresponding action” to mean more than simply allowing the packets. PO Resp. 10–11 (citing Prelim. Resp. 2, 23–24); PO Sur-reply 5–7. Patent Owner states that other claim limitations, e.g., “comparing the identified flow data with the list of the identification data” (step 1[e]), are recited separately from “performing a corresponding action on each packet of the encrypted communication flow associated with the match data on the list.” PO Sur-reply 7. Patent Owner argues that, for this reason, a construction of “performing a corresponding action” in step 1[f] that does not require some action, other than re-encrypting and transmitting the packets, renders the limitations superfluous. Id. (arguing that different claim terms are presumed to have different scope, citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000)). result. In the ’526 patent claims, the action taken on a packet in step 1[f], e.g., blocking or allowing and logging a communication as discussed in the patent, or merely allowing a communication (the opposite of blocking a communication), is an action on a decrypted packet that corresponds to a “packet of the encrypted communication flow associated with the match with data of the list” (step 1[e]). As Patent Owner acknowledges, the claims do not limit those actions. Thus, the comparing of step 1[e] and the action of allowing the transmission taken in step 1[f] are of different scope. Similarly (and consistent with Patent Owner’s analysis), the further steps of re-encrypting and transmitting the packet in step 1[g] are taken “after performing the corresponding action,” e.g., after allowing the packet, and are presumed to be of different scope from the allowing action in step 1[f]. Ex. 1001, 18:17. Re-encrypting and transmitting a packet that was previously decrypted as matched against flow identification criteria and determined to meet criteria allowing the packet to be transmitted without some other action, are not superfluous steps. Thus, as used in the claims of the ’526 patent, we determine that a “corresponding action” includes any action, including the action of allowing a further transmission of a packet, without further action.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Patent Owner’s emphasis on indexing is misplaced. In Acceleration Bay, the court affirmed the Board’s findings that the subject reference (Lin) was not meaningfully indexed because the website allowed a user to view a list of technical reports indexed only by author or year and its advanced search form was not reliable. Acceleration Bay, 908 F.3d at 773–74. In Blue Calypso, the court noted that there was no evidence a party could navigate from a university’s website concerning common subject matter to the reference itself, i.e., the personal webpage of Ratsimor. Blue Calypso, 815 F.3d at 1350. The facts of Acceleration Bay and Blue Calypso are distinguished from the present circumstances where Cisco’s networking products were well known to persons of ordinary skill and the reference is a page on Cisco’s own website. Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012). In Voter Verified, the court addressed an article (Benson) posted to an on-line publication (Risks Digest) concerning the claimed subject matter (risks of computer automation), noting that Risks Digest was a prominent forum for discussing such technologies (over 100 articles relating to electronic on-line voting). Voter Verified¸ 698 F.3d at 1380–81. The article’s publication on a site interested persons of ordinary skill would have recognized as important “overcame the absence of evidence that the website at which the article was located was indexed and thereby findable by an internet search engine.” See Blue Calypso, 815 F.3d at 1349 (discussing Voter Verified); Voter Verified¸ 698 F.3d at 1380–81. In Voter Verified the court stated: The Risks Digest website was undisputedly open to any internet user by the critical date. Whether or not the website itself had been indexed by 1999 (through search engines or otherwise), the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. And upon accessing the Risks Digest website, such an interested researcher would have found the Benson article using that website’s own search functions and applying reasonable diligence. In short, the Benson article was publicly available by the critical date and therefore qualifies as a prior art “printed publication” under § 102(b). Voter Verified, 698 F.3d at 1381. Dr. Prakash testified that a person of ordinary skill would have looked for product manuals and product descriptions concerning the relevant subject matter from other vendors in addition to Cisco, including BlueCoat, Sophos, Trend Micro, and Palo Alto Networks. Ex. 1002, Prakash Decl. ¶ 129. Guide provides instructions for setting up, administering, and monitoring the IronPort Web Security appliance.” Ex. 1008, 27. Where a document’s “purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.” Valve, 8 F.4th at 1374 (quoting Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014)). The IPUG document bears the date of November, 2010, on its title page, as well as a copyright date of 2010. Ex. 1008, 1–2; Ex. 1010, 18–19. Although Patent Owner argues the copyright date on the document is hearsay, we do not rely solely on the reference’s copyright notice. The Wayback Machine indicates IPUG was archived before the July 24, 2017 filing date of the provisional application from which the ’526 patent claims priority. Ex. 1001 (code 60), 1:6–9; Ex. 1010, Frank-White Decl. (Ex. A), 5 (Wayback Archive Page of Dec. 29, 2103 identifying IPUG as available on Cisco’s website as of Dec. 29, 2013), 6, 8 (Wayback Archive Page listing IPUG available on Cisco’s website on March 1, 2017), 11–12 (Wayback Archive Page of March 9, 2010 identifying IPUG product).” slip op. at 20
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“Patent Owner’s argument that the NMC drops the traffic after analysis and never re-encrypts is unavailing, as further evidenced by Dr. Goodrich’s deposition testimony. Altman’s NMC does not function to re-encrypt and transmit traffic, but instead uses unencrypted data from the SIA to determine whether to instruct the SIA, which functions as the Man-In-The-Middle, to block or re-encrypt and transmit packets. See Ex. 1005 ¶¶ 31–33; Ex. 1014, Goodrich Tr. 42:18–22 (agreeing that Altman does not describe the NMC itself as accepting or processing encrypted communications), 38:12–15 (agreeing that the SIA responds to instructions from the NMC). sufficiently that Altman at least suggests re-encrypting the decrypted traffic after performing the corresponding action as recited in claim limitations 1[f] and 1[g]. Dec. to Inst. 49–50. As discussed below, having reviewed the arguments and evidence of record, we are also persuaded that a skilled artisan would reasonably understand or infer limitation 1[g] from Altman’s disclosure. See Dayco Prods., 329 F.3d at 1368 (stating that “the dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim element was disclosed in that single reference”). Patent Owner’s citation to Exhibit 1007 (Netronome) as “showing a similar out-of-band9 analysis” informs our understanding of what a person of ordinary skill would reasonably understand or infer from Altman. PO Resp. 47; Ex. 1005 ¶ 12. Netronome, incorporated into Altman by reference, discloses an embodiment for plaintext inspection of SSL-encrypted flows, using a proxy to examine and inspect the SSL-encrypted content before entering or exiting an enterprise. Ex. 1007, 2; Ex. 1005 ¶ 12. In one Netronome embodiment, each individual session terminates on the SSL inspector, but TCP connections are retained end-to-end. Ex. 1007, 6. Terminating and re-originating SSL allows the appliance to obtain plaintext in the encrypted signal that is sent to an adjacent security appliance in a regenerated TCP stream; the data remains encrypted on both the connection 9 Neither the ’526 patent nor Altman uses the term “out of band.” Ex. 1014, Goodrich Tr. 35:19–25. As to Altman, Dr. Goodrich appears to be referring to copies of data flows decrypted by the SIA and received by the NMC as “out of band” content. Id. at 46:11–16 (noting that the NMC is never disclosed as processing flows where it would be sending packets back to a destination); see also id. at 36:3–22. server. Ex. 1007, 6. Petitioner’s Altman-based challenges do not rely on Netronome,” slip op. at 56
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The Petition asserts that IPUG discloses elements 1[f] and 1[g] because IPUG discloses that when encrypted data in an HTTPS connection are received, the appliance (1) decrypts the received encrypted data, if the URL category (the claimed “identified flow identification data”) matches the data in the Decryption Policies, (2) applies the Access Policies to the decrypted plaintext traffic, (3) if the Access Policies allow the traffic, intended destination. Pet. 23–24 (citing Ex. 1008, 257, 268–69; Ex. 1002 ¶¶ 224–229, 232–233).” slip op. at 29
Patent outcomesUS 10,284,526 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,284,526 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2023-00188 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable under the stated obviousness grounds; the motion to amend with substitute claims 23–26 is denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein. Having considered the arguments and evidence of record, we” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) references themselves. 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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Further, although Patent Owner is correct in stating that Guthery discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17
- 112 supportMotion to amend, deniedDenied
“In light of the full record before us, including Patent Owner’s arguments at the Oral Hearing, we now consider whether the proposed amended claim properly encompasses a device other than the reader performing the claimed selection. We agree with Petitioner’s contention, that the “claim doesn’t tell us . . . which element performs the selection,” and that “[t]his difference . . . divorces the claim from the functionality described in the specification.” Opp. 3–4 (citing Ex. 1002, 290 (Spec. ¶ 21)). Dr. Phinney’s testimony supports this contention. Ex. 1026 ¶ 12. We do not give weight to the arguments by Patent Owner’s attorney at the Oral Hearing, because attorney argument cannot take the place of objective evidence. Gemtron Corp., 572 F.3d at 1380. This is especially true here, where the specification discloses that the reader makes the selection, but does not disclose that any other device makes or would be capable of performing the selection. Patent Owner has not shown, nor do we find, support in the disclosure of the ’706 patent for a device other than the reader performing or capable of performing a selection. Thus, based on Patent Owner’s position that the proposed claim amendment would encompass non-reader devices making the selection, the proposed amendment adds new matter and is impermissible. See Gentry Gallery Inc. v. Berkline Corp., 134 supporting disclosure, and therefore . . . a narrow disclosure will limit claim breadth.”). Accordingly, Patent Owner has not shown, nor do we find, support for “wherein after selection of one of the plurality of applications, subsequent communication between the reading device and the selected application takes place without requiring any further steps” as recited in independent proposed substitute claims 23, 25, and 26. Due to the lack of support in the original disclosure of the ’706 patent for this limitation, proposed substitute claims 23, 25, and 26, and claim 24 by virtue of its dependency from claim 23, seek to introduce new subject matter.” slip op. at 40
Patent outcomesUS 8,581,706 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706
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