- 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 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01137 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable as obvious; the motion to amend with proposed substitute claims 23–26 is denied.
RulingsFinal written decision- 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, 1994). Petitioner submits that the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction. Pet. 13–14. Although we may discuss the scope of the claim language during our analysis, we agree that no specific construction is necessary for us to reach our decision.” slip op. at 8
- 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.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“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
Patent outcomesUS 8,581,706 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01135 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Burger and Cheng because their combination teaches the claimed authentication quality information and security-establishing operation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner acknowledges that in parallel district court litigation, it has proposed the term “an inherently relatively lower quality and an inherently relatively higher quality from a security perspective” recited in claims 1 and 10 be construed as indefinite. Pet. 15. Noting that in the district court, Patent Owner asserted no construction is necessary, Petitioner adopts Patent Owner’s district court proposed construction for purposes of this proceeding. Id. We agree that no construction of this term is necessary, as the plain and ordinary meaning of “an inherently relatively lower quality and an inherently relatively higher quality from a security perspective” is ascertainable in the context of the claims.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“does not express “a clear indication . . . that the patentee intended the claims to be so limited.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.”). Rather, we agree with Patent Owner, that “an exemplary ‘security establishing operation’ [is] creating a digital signature.” PO Resp. 11; Ex. 1001, 4:31−32 (“the chip card . . . perform[s] the security-establishing operation, i.e., the digital signature”); 4:67−5:2 (“the portable data carrier 20 switches itself ready to execute the intended security-establishing operation, i.e., perform a digital signature”). Therefore, the claimed “security-establishing operation” is not limited to an operation that creates a digital signature. We are not persuaded by Patent Owner’s argument that the “security- establishing operation” excludes other operations that establish security, such as encryption operations generally. The specification’s description of a digital signature (Ex. 1001, 4:31−32, 4:67−5:2) as a way to perform the “security-establishing operation,” in no way indicates that a further encryption of a digital signature is precluded as a way to carry out the recited operation. We are also not persuaded by Patent Owner’s argument that, because the “security-establishing operation” must be performed “within the electronic transaction,” the claimed operation cannot encompass secured communication by the data carrier. PO Sur-reply 1 (arguing that the “[t]he ’249 patent teaches and claims a portable data carrier that performs a ‘security establishing operation’ inside the transaction and separate from the reply 9−11. The claim language does not make any distinctions between security of data carrier communications and security of the electronic transaction itself. In other words, the claim language is agnostic as to whether the electronic transaction is securely established by performing a digital signature of a transaction document or by encrypting the transmission of the document. Again, we recognize that the ’249 patent specification describes the data carrier’s operation as performing a digital signature, as stated above. But this one embodiment is not limiting. The specification broadly describes one example of the microprocessor in the data carrier as capable of subjecting a data record to a “cryptographic algorithm.” Ex. 1001, 3:16−19. There is no indication in this embodiment of a “security-establishing operation” or in the claim language, that the cryptographic algorithm must be applied at any particular time, such that the security-establishing operation cannot be an encryption operation concurrent with secured transmissions by the data carrier. Therefore, based on the evidence of record, we construe “creating authentication quality information by the portable data carrier about said user authentication method used and attaching said authentication quality information to the result of the security-establishing operation” to encompass at least attaching quality information to an encrypted document, such as a digitally signed document.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded by Patent Owner’s argument that we should accord the testimony of Dr. Neuman little or no weight simply because it is identical to 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.). Mr. Neuman’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. For example, in testifying that performing a digital signature was one known security operation used to secure transaction communications, Dr. Neuman supports his testimony with evidence from Cheng, Sarcanin, Russo, and Fischer. Ex. 1003 ¶ 81 (citing Exs. 1006, 1007, 1010, and 1011). We find that the declarations of Dr. Neuman are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Neuman’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein.” slip op. at 21
Patent outcomesUS 8,205,249 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,205,249 - Apple Inc. v. Aire Technology LimitedSome claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01136 · APJ Brian J Mcnamara · IPR · Final written decision
Claim 15 is unpatentable as obvious over Tobergte and Cole; claims 1–3 and 8–11 were not shown unpatentable because the references did not disclose claim 1’s search-signal limitation.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Tobergte’s computer 38 and oscillator 34 are disconnected from energy source 40. Pet. Reply 14–15. Petitioner acknowledges that Tobergte improves upon prior art systems, in which the fixed station emits the high frequency magnetic field continuously, by emitting the high frequency magnetic field “only upon awakening from a low power rest state.” Petitioner points to the testimony of Dr. Phinney concluding that Cole’s presence detector is at a power level too low to fully power the data carrier, but sufficient to allow the data carrier to change the impedance of the field. Id. at 21 (citing Ex. 1003, Phinney Decl. ¶ 53, commenting on Ex. 1006, 6:1–8 cited by Patent Owner); id. at 2 (citing Ex. 1005, 1:21–35). Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“sufficient for the data carrier to switch to passive mode. Id. at 6:1−5. When the data carrier is switched into passive mode, the data carrier’s supply device generates the operating voltage for the electric circuit from the received high frequency energy. Id. at 6:5–9. Claim 1 of Tobergte does not suggest that the fixed station performs any search function. Instead, Tobergte’s fixed station receives both energy and data from the data carrier for the brief period that the data carrier is in the active mode. There is no indication that Tobergte’s fixed station is emitting signals to search for the data carrier. Instead, Tobergte claims a system in which the data carrier that “wakes up” the fixed station is then powered by the energy of the high frequency field transmitted by the fixed station. None of Tobergte’s other claims explicitly recites a search limitation. In other words, Tobergte describes and claims changing a conventional data carrier that transmits data only when interrogated (id. at 3:48−52) into a data carrier that begins transmitting energy and data first, when activated by a user (id. at 3:55−58, 3:65−67).” slip op. at 25
- Expert testimonyPetitioner expert creditedOther
“Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16
Patent outcomesUS 8,174,360 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,174,360 - Keysight Technologies, Inc. v. Centripetal Networks, Inc.Some claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01097 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–3, 5–13, and 15–20 are unpatentable as obvious; claims 4 and 14 were not shown unpatentable because Sourcefire did not disclose the claimed responsive updating of an existing packet flow log entry.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address this issue, and neither side argues that it might affect the patentability analysis or otherwise change the outcome. Thus, as 2 Sourcefire 3D System User Guide, Ver. 4.10, Mar. 16, 2011 (Ex. 1004). 3 U.S. Patent App. Pub. No. 2015/0207809 A1 (Ex. 1029). we did at institution, we apply Petitioner’s description of an ordinarily skilled artisan, as we find it consistent with the ’917 patent and the asserted prior art. B.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. Threat Identifier and Threat Indicator Patent Owner identifies two terms that were construed in the ITC investigation involving the ’917 patent based on constructions agreed upon by the parties. PO Resp. 9. First, the parties in the ITC investigation agreed that “threat identifier” means “information that identifies one or more network threats.” Id. at 11 (citing Ex. 2004, 3). Second, the parties further agreed that “threat indicator” means “information that indicates a resource associated with a network threat,” “[f]or example, network addresses, ports, FQDNs, URLs, URIs, the type of threat, geographic information, anonymous proxies, actors, or the like.” Id. at 11–12 (citing Ex. 2004, 3). Patent Owner asserts that these constructions should be used in this proceeding. Id. at 12. Petitioner does not dispute these constructions, and we adopt them.4” slip op. at 12
- ExcludeMotion to exclude, grantedGranted
“Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14
- Expert testimonyDecided for petitioner
“Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14
Patent outcomesUS 10,193,917 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,193,917 - PTAB · Dec 1, 2023 · IPR2023-00922 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–11, finding a reasonable likelihood of success on Amanatides and Kohn for claims 1–11 and Selzer and Fiske for claim 2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 6. This Decision on Institution is issued pursuant to 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response., for the reasons described below, we institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The ’454 patent explicitly defines its unified shader stating “[t]he shader of the present invention is referred to as a ‘unified’ shader because it is configured to perform both vertex and pixel operations.” Ex. 1001, 3:10– 12. This definition does not limit the unified shader to one that switches back and forth between executing vertex and pixel threads. The ’454 patent also describes the embodiment in Figure 4A and Figure 5 as “exemplary.” In this “exemplary” embodiment, the unified shader “has ability to simultaneously perform vertex manipulation operations and pixel manipulation operations at various degrees of completion by being able to freely switch between such programs or instructions, maintained in the instruction store, very quickly.” Id. at 5:32–37. Claim 11 explicitly recites this feature. Id. at 8:26–30 (reciting “wherein the processor unit of the unified shader performs the vertex manipulation operations and pixel switching between instructions in the instruction store”). Based on the explicit definition of a unified shader in the ’454 patent and the explicit recitation in claim 11, we decline to adopt a construction that imports additional limitations into the term “unified shader.” The limiting term “unified shader” appears in the preamble of all the claims. We construe the claimed “unified shader” to mean a shader that is configured to perform both vertex and pixel operations. Ex. 1001, 3:10–12.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention.” Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 974–975 (Fed. Cir. 2014). As to conception of the subject matter claimed in the ’454 patent, Patent Owner cites (i) the R400 Top Level Specification dated March 14, 2001 authored by inventor Steve Morein (Ex. 2103), (ii) the R400 Shader Processor Specification dated January 23, 2001 authored by inventors Andrew Gruber and Andi Skende (Ex. 2012), and (iii) the R400 Sequencer Specification dated August 24, 2001 authored by inventor Laurent Lefebvre (Ex. 2010). Prelim. Resp. 25–30. According to Patent Owner the R400 Top Level Specification describes the R400 as including a shader processor and a sequencer, and explains that the R400 implements a unified processing pipe that includes a processor unit to perform 3D vertex and pixel operations. Id. at 28–29 (citing Ex. 2013, 9–10; Ex. 2001, Declaration of Dr. William Mangione-Smith (“Mangione-Smith Decl.”) ¶¶ 79, 98, 121, 133, 145, 182). Patent Owner cites the R400 Shader Processor Specification as describing general purpose registers configured to store both vertex and pixel data. Id. at 29 (citing Ex. 2001, Mangione-Smith Decl. ¶¶ 103, 125, 137). slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“3. Reasons to Combine the Teachings of Lindholm ’685 and Lindholm ’913 Noting that Lindholm ’685 and Lindholm ’913 are both directed to a multithreaded shader and much of their Specifications and figures are the same, Petitioner contends that a person of ordinary skill would have recognized the Lindholm references disclose different details of the same ordinarily skilled artisan would have looked to the additional disclosure in Lindholm ’913 for additional details about scheduling threads for execution independent of other threads. Id. at 22. We agree that a person of ordinary skill would have had reason to combine the teachings of the Lindholm references.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,760,454 - Netflix, Inc. v. Gotv Streaming, LLCInstitutedPTAB · Nov 7, 2023 · IPR2023-00759 · APJ Richard M Lebovitz · IPR · Institution
Instituted IPR of claims 1–20, 31, and 34 on all petition grounds; the Board found a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be deemed waived. For the reasons below, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that at least one of the claims challenged in the petition is unpatentable. See 37 C.F.R. § 42.108(c) (2023). Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “generally concurs” that a POSITA “would have an electrical/computer engineering degree or a degree in a closely related field.” Prelim. Resp. 19. However, Patent Owner further adds that the POSITA “would have a couple of years’ experience in the ‘field of wireless communication systems” and “[m]ore particularly, . . . method[s] and system[s] for rendering applications on a wireless device.’” Id. (citing Ex. 1001, 1:13–16). The statements quoted by Patent Owner from the ’865 patent are in the section titled “Technical Field.” Ex. 1001, 1:13–16. Dr. Bederson defined the prior art as “the field of technology to which a patent is related.” Ex. 1002 ¶ 36 (emphasis added). Thus, it is not inconsistent with Dr. Bederson’s definition of the level of ordinary skill in the art to require the work experience to be in the technical field of the ’865 patent.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that it “is unaware of any ‘prior claim construction determination’ related to the ’865 patent.” Pet. 10. Petitioner states that it “believes that no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Id. Petitioner, relying on Phillips, asserts that “the claims should be given their plain and ordinary meaning,” Id. Patent Owner responds that “Petitioner purports to give all claim terms their plain and ordinary meaning,” but contends that this position is “belied by the fact that Petitioner puts forth constructions for terms throughout the petition,” citing specific examples in which Petitioner is asserted to have defined or explained a claim term. Prelim. Resp. 19–20. Patent Owner states that to the extent necessary, it will address Petitioner’s proposed constructions as they arise. Id. at 20. That Petitioner has implicitly defined and explained terms at various times in the Petition is factually supported by Patent Owner’s citations to the Petition. See Prelim. Resp. 20. Nonetheless, “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We first address the recited phrase “syntax that is wireless device generic.” The ’865 patent discloses that while “the wireless device receives the basic commands that are tailored and are specific to the wireless device based on device’s attributes and capabilities,” the “syntax of these commands is device generic.” Ex. 1001, 4:3–6. The ’865 patent explains that the rendering blocks, which perform the rendering of the application content, “operate in a way that is device specific.” Id. at 7:27–29. The ’865 patent further explains: According to one embodiment, the requested application content is received as compiled content that includes a series of basic commands representing a page description. Basic commands are precompiled by the server 230 and ready for commands are written in a syntax that is device generic regardless of the device type but whose parameters are tailored based on the wireless device capabilities. As such, precompiled basic commands are discrete low level rendering commands tailored based on the rendering capability of the client 210. Ex. 1001, 13:15–25.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,103,865 - Netflix, Inc. v. Gotv Streaming, LLCInstitutedPTAB · Nov 7, 2023 · IPR2023-00758 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–33 on all petition challenges, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
Nonecites Phillips · KSR · GrahamPatents in suitUS 8,478,245 - Netflix, Inc. v. Gotv Streaming, LLCInstitutedPTAB · Nov 7, 2023 · IPR2023-00757 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–20 on all challenges, finding a reasonable likelihood of prevailing on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–20 in the ’715 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“C. Conclusion Concerning Discretionary Denial in View of Parallel Litigation Based on our assessment of compelling merits as discussed in more” slip op. at 27
- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 28
- BurdenInstituted
“C. Analysis Based on the current record, it is highly likely that Petitioner will” slip op. at 104
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,989,715 - PTAB · Nov 6, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–30, finding a reasonable likelihood that the challenged claims are obvious over the specified combinations of prior art.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Institution Decision and directed us to revisit our analysis regarding Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Paper 14 (“Remand Decision,” “Remand Dec.”), 4–8. The Director agreed that our determination that the first part of the Advanced Bionics framework was met (id. at 5 (citing Orig. Inst. Dec. 9– 10)), but with respect to the second part of the Advanced Bionics framework, the Director stated: I find that Petitioner’s arguments and cited evidence establish that the Office erred in a manner material to patentability under the particular circumstances of this case. Specifically, Petitioner’s arguments and cited evidence establish there is substantial overlap in the subject matter described in the ’009 patent and the ’148 patent[1] (subject to the ʼ148 FWD)[2], generally, and the claimed subject matter recited by the challenged claims of the ’009 patent and of the ’148 patent, specifically. Remand Dec. 6 (citing Pet. 15–68; Ex. 1010; Ex. 2001). The Director further found that “the Office erred by overlooking the significance of the ’148 FWD as it pertains to the patentability of the claims of the ’009 patent.” Id. at 7. Lastly, the Director determined that, “under the specific circumstances of this proceeding, I find the second part of the Advanced Bionics framework is satisfied,” such that “the facts here do not warrant exercising discretion to deny institution under 35 U.S.C. §325(d).” Id. at 8. As such, given that the only discretionary issues argued by the parties were directed to denial under 35 U.S.C. §325(d) (see Pet.; Prelim. Resp.), we proceed to consider the merits of the grounds of unpatentability raised in the Petition. Further, as set forth below, we determine that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Thus, we institute an inter partes review in this proceeding.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’009 Patent is unpatentable. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–30 of the ’009 Patent on the following asserted grounds: Claims 1–5, 8–24, and 26–30 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, and Hayter; and Claims 6, 7, and 25 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, Hayter, and Esbensen;” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry 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- 3 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 4 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 5 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 6 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 7 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). attacks.” Pet. 5 (citing Ex. 1003 ¶¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, we find Petitioner’s proposal consistent with 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); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 7
- PTAB / AIA Trials › §315(e) estoppelDecided for patent owner
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (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) plaintiff 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., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). With respect to the language of the instant challenged claims, we agree with Patent Owner on the issues of collateral estoppel. As Patent Owner points out, the prior determinations were made with respect to a different claim construction standard. Additionally, although the claims of the ’148 Patent and ’009 Patent are similar in scope, the recitations are not identical. Therefore, we evaluate the arguments and evidence presented in the Petition to determine whether Petitioner has demonstrated a reasonable likelihood that at least one of the challenged claims is unpatentable, rather than assuming that Patent Owner is generally estopped from asserting patentability of the challenged claims over previously presented art. Nonetheless, where appropriate, we consider the Petition’s citations to the ’148 FWD, which is part of the evidence of record in this proceeding. More particularly, we agree with Petitioner that certain issues were decided by the ’148 FWD, having been resolved against Patent Owner and affirmed by the Federal Circuit, and are binding in this proceeding. Pet. 11. Given that the ’009 Patent is a continuation of the ’148 Patent, sharing an identical Specification, we agree that Roese, Golnabi, Huima, Hayter, and Esbensen are acknowledged as prior art, that there would have been motivation to combine the references, and that combinations of those references demonstrate the obviousness of all claims of the ’148 Patent. See Id. at 11–12. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,681,009
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.