- Netskope, Inc. v. Bitglass, Inc.Institution deniedPTAB · Dec 14, 2021 · IPR2021-01046 · APJ Kevin C Trock · IPR · Institution
The Board denied institution on all challenged claims because Netskope did not justify filing a second petition challenging the patent with the same prior art.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“We agree with Patent Owner, that on this record, two petitions from Petitioner challenging the claims of the ’090 patent are not warranted. First, as Patent Owner points out, and we have noted, Petitioner has not provided us with any explanation as to why multiple petitions are necessary, despite the guidance in the TPG. See TPG 59–61. As such, we are left with no justification for the two petitions from Petitioner to weigh against Patent Owner’s arguments. Second, we do not discern, based on our own review of the petitions, why one petition would not have been sufficient to challenge the claims of the ’090 patent, given the substantial overlap in the subject matter of the claims. The ’090 patent has three independent claims. Ex. 1001, 13:55– 18:22. Claim 1 is written as a method claim, claim 9 is written to cover “[a] non-transitory computer readable medium” storing software instructions of the method of claim 1, and claim 17 is written as a system implementing the method of claim 1. Id. at 13:56–14:19, 14:65–15:30, 16:22–60. The claims depending from these independent claims recite similar subject matter. As Patent Owner argues, Dr. Franz’s testimony is repetitive, often referencing analysis directed to claim 1 and its challenged dependent claims in analyzing claim 17 and its challenged dependent claims. See Prelim. Resp. 8–16.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“III. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated a need for multiple petitions to challenge the claims of the ’090 patent and we exercise our discretion under 35 U.S.C. § 314 to deny the petition requesting inter partes review in IPR2021-01046. IV. ORDER Accordingly, it is ORDERED that an inter partes review is not instituted as to all challenged claims on the grounds raised in the petition.” slip op. at 14
Discretionary denialPatents in suitUS 10,757,090 - Netskope, Inc. v. Bitglass, Inc.InstitutedPTAB · Dec 14, 2021 · IPR2021-01045 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on all challenged claims and all petition grounds, finding 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 not be instituted “unless . . . 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Parallel petitionsNot reached
“Patent Owner argues that institution should be denied “under 35 U.S.C. § 314(a) . . . given the Petitioner’s . . . filing of multiple petitions on the ’090 patent.” Prelim. Resp. 19.1 (requesting the Board deny “this Petition . . . or the Petition filed in IPR2021-01046” on a discretionary basis). We exercise our discretion to not institute trial in IPR2021-01046, because Petitioner did not justify two petitions challenging the ’090 patent.2 In view of the denial of institution of IPR2021-01046, we need not consider further Patent Owner’s arguments on discretionary denial in this Decision.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a bachelor’s degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and [having] at least two years of experience with applying web-based service computing technologies, including the then-current technologies such as HTML, XML, Java, and JavaScript.” Pet. 12 (citing Ex. 1002 ¶¶ 24–28). Patent Owner states “the Board can resolve this IPR against Petitioner at the preliminary stage by applying the Petition’s asserted definition of the person of level of ordinary skill in the art.” Prelim. Resp. 30 (citing Pet. 12). Petitioner’s description of the level of ordinary skill is generally consistent with the subject matter of the ’090 patent. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, “Petitioner does not believe that any claim constructions are needed.” Pet. 12. Patent Owner states “the Petition does not appear to present any issues that require the Board to construe the claims to resolve the issues at the institution stage.” Prelim. Resp. 31. For purposes of this Decision, we do not find it necessary to expressly construe any claim terms.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,757,090 - Netskope, Inc. v. Bitglass, Inc.Institution deniedPTAB · Dec 14, 2021 · PGR2021-00092 · APJ James J Mayberry · PGR · Institution
The Board denied institution of PGR on claims 17–20 and 22–24, exercising discretion under § 324(a) because the parallel petitions were not justified.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we exercise our discretion to deny the Petition.” slip op. at 2
- Parallel petitionsInstitution denied discretionary otherDenied
“We agree with Patent Owner that two petitions challenging the claims of the ’671 patent are not warranted under these circumstances. First, as Patent Owner argues, Petitioner has provided us with no explanation as to why multiple petitions are necessary here, despite our guidance in the CTPG, which states that such an explanation should be provided at the time the multiple petitions are filed. See CTPG 59–61. As such, we are left with no justification for the two petitions from Petitioner to weigh against Patent Owner’s arguments. Second, we do not discern, based on our own review of the petitions, any reason why one petition would not have been sufficient to challenge the claims of the ’671 patent, given the substantial overlap in the subject matter of the claims. The ’671 patent has three independent claims. Ex. 1001, 13:61–17:9. Claim 1 is written as a method claim, claim 9 is written to cover “[o]ne or more non-transitory computer-readable storage media” storing instructions of the method of claim 1, and claim 17 is written as a system implementing the method of claim 1. Id. at 13:65–14:17, 15:1–22, 16:12–38. The claims depending from these independent claims recite similar subject matter. Compare, e.g., 14:51–53 (claim 7), with 15:60–63 (claim 15) and 16:42–44 (claim 19) (reciting subject matter directed to the identity provider monitoring the operating status of the application proxy server).12 As Patent Owner argues, Dr. Franz’s testimony is repetitive, often referencing analysis directed to claim 1 and its challenged dependent claims in analyzing claim 17 and its challenged dependent claims. See, e.g., Ex. 100213 ¶¶ 140, 141, 143–146 (referencing the analysis of elements of claim 1 for elements of claim 17), ¶¶ 147–149 (referencing the analysis of claims 4 and 5 for claims 22 and 18/23). We recognize that Petitioner challenges the priority date of the ’671 patent. See Pet. 16–23; CTPG 59 (indicating a priority date dispute could justify multiple petitions). Also, one set of grounds depends, in part, on the priority date of the Challenged Claims. See Pet. 96–120 (challenging claims based on a reference in the priority chain of the ’671 patent). Petitioner does not, however, differentiate its petitions based on this issue—both petitions have identical grounds, most of which do not turn on the priority date of the Challenged Claims. See Prelim. Resp. 13–14 (“[A]lthough there is a priority 12 Additional overlap exists—as evidenced in a comparison of the combined recitations of claims 18 and 23 with claims 5 and 13, claim 19 with claims 7 and 15, claim 20 with claims 8 and 16, claim 22 with claims 4 and 12, and claim 24 with claims 6 and 14. Ex. 1001, 13:61–17:9. 13 Ex. 1002 is the same exhibit filed in both PGR2021-00091 and PGR2021- 00092. See Ex. 1002, title page. issue raised by the Petition, the Petitioner is not proposing alternate grounds based on different priority dates of the patent claims. Both petitions raise the same ground and have the same exact prior art combinations.”). Thus, the particular circumstances of this proceeding do not appear to warrant multiple petitions.” slip op. at 22
Discretionary denialPatents in suitUS 10,855,671 - Netskope, Inc. v. Bitglass, Inc.InstitutedPTAB · Dec 14, 2021 · PGR2021-00091 · APJ James J Mayberry · PGR · Institution
Instituted PGR on claims 1, 2, 4–10, and 12–16; the Board found the petition showed a more-likely-than-not basis that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the Challenged Claims is unpatentable. Accordingly, we institute a post-grant review of the Challenged Claims of the ’671 patent.” slip op. at 2
- Parallel petitionsOther
“II. DISCRETIONARY DENIAL Patent Owner argues that we should exercise discretion to deny the Petition in this proceeding, or the petition in PGR2021-00092. Prelim. Resp. 15. Patent Owner argues that Petitioner filed two petitions challenging the same patent without justifying the need for two petitions. Id. at 3–15. We exercise our discretion to not institute trial in PGR2021-00092, because Petitioner did not justify two petitions challenging the ’671 patent.13 In view of the denial of institution of PGR2021-00092, we need not consider further Patent Owner’s arguments on discretionary denial in this Decision.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not define the level of ordinary skill and, instead, states that we should “apply[] the Petition’s asserted definition of the level of ordinary skill in the art.” Prelim. Resp. 44. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art. We determine that Petitioner’s definition is consistent with the prior art of record and the skill reflected in the Specification of the ’671 patent, based on our review of the limited record.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms need an express construction. Pet. 25. Patent Owner states that “the Petition does not appear to present any issues that require the Board to construe the claims to resolve the issues at the institution stage.” Prelim. Resp. 44. We agree with the parties that, at least at this stage of the proceeding, we need not expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,855,671 - SAP SE v. Teradata US, Inc.Institution deniedPTAB · Dec 1, 2021 · IPR2021-01017 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show the claimed file management context in non-persistent memory.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “the information presented in the petition . . . and any 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). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’419 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art at the time of the invention “would have possessed at least a Bachelor’s degree in computer science with at least two years of experience with database system development.” Pet. 14 (citing Ex. 1006 ¶¶ 21–22). Petitioner further contends that a person of ordinary skill in the art could have had “some combination of (1) more formal education and less technical experience, or (2) less formal education and more technical or professional experience.” Id. (citing Ex. 1006 ¶¶ 21–22). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’419 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms require explicit construction at this stage of the proceeding. Pet. 16. Patent Owner contends that in related district court litigation, Petitioner has proposed construing several terms in accordance with pre-AIA 35 U.S.C. § 112 ¶ 6, and Patent Owner faults Petitioner for not applying those constructions in the Petition. Prelim. Resp. 7–8. Based on the record before us, we need not construe any claim terms expressly to decide the issues presented at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“does not show sufficiently that the combination of System R and Lorie teaches a “file management context” stored in “non-persistent memory.” See Prelim. Resp. 16–22. As an initial matter, Petitioner asserts that the “Current Page Table and associated data structures such as free-space bit maps” comprise the claimed “file management context” in “non-persistent memory,” but Petitioner does not cite any passage in System R disclosing that the current page table (or any associated data structure) resides “in memory” rather than “on disk,” as shown in Petitioner’s annotated version of System R’s Figure 7. See Pet. 28–35. Nor does Petitioner point to any disclosure in Lorie in support of its contention that the current page table in the System R database system is stored in non-persistent memory. See id.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,904,419 - PTAB · Nov 23, 2021 · IPR2021-00987 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–25, finding a reasonable likelihood that Rosenberg anticipates claims and that the cited combinations render other claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claims 1–25 of U.S. Patent No. 8,489,599 B2 (Ex. 1001, “the ’599 patent”), along with the Declaration of Steve Smoot. Paper 1 (“Pet.”); Ex. 1002. Palo Alto Research Center Inc. (“Patent Owner”)1 filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’599 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–25 of the ’599 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“person of ordinary skill in the art at the time of the ’599 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of content presentation and context-based systems/processes.” Pet. 3 (citing Ex. 1002 ¶¶ 30–32). Petitioner further asserts that additional “education can supplement practical experience and vice versa.” Id. Patent Owner presents no proposed qualifications. See generally Prelim. Resp.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no express constructions of any claim terms are required to assess the prior art under the Petition’s challenges. Pet. 4. Patent Owner does not present any proposed claim constructions. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“this record, we determine that Petitioner has sufficiently demonstrated that Rosenberg discloses limitations 1[h] and 1[i]. Limitation 1[h] requires only that there is a determination as to whether a received response matches the expected response. Even though the ’599 patent Specification may disclose instances that allows for both expected and unexpected responses, there is no recited limitation requiring that there be a determination made for an unexpected response. Effectively, Patent Owner’s arguments in this regard appear to attempt to impermissibly write in a limitation into the claim. Rosenberg’s system determines whether the received response matches one of a plurality of expected responses (e.g., “terminate” or “defer”), and based on that determination, performs an action. Because the claim does not appear to explicitly require the system to receive unexpected responses, Rosenberg’s disclosure of a device that determines whether a user response matches an expected response (e.g., from among several possible expected responses) is sufficient for institution purposes. We have reviewed the evidence and argument and on this record we determine that Petitioner has presented sufficient evidence that Rosenberg discloses limitations 1[h] and 1[i]. iv. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is anticipated by Rosenberg.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,489,599 - PTAB · Nov 23, 2021 · IPR2021-00986 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that the challenged claims would have been obvious under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claims 1–20 of U.S. Patent No. 9,208,439 B2 (Ex. 1001, “the ’439 patent”), along with the Declaration of Steve Smoot. Paper 1 (“Pet.”); Ex. 1002. Palo Alto Research Center Inc. (“Patent Owner”)1 filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’439 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–20 of the ’439 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“evidence that Nitz teaches limitation 1[b]. The term “context graph” is “an in-memory model that stores facts and assertions about a user’s behavior and interests,” as explicitly described in the ’439 patent Specification. Ex. 1001, 3:20–22. Although a context graph is described as being “graph-based” or having nodes and edges in some embodiments (see id. at 7:26–28, 7:41–43, 7:58–59), the Specification has other descriptions of a “context graph” that support an interpretation of the term that is consistent with the explicit description of the term noted. For instance, the Specification describes that the context graph “is a database of information about the user,” that, for example, includes data relating to the personal habits of the user, and the data may be stored “according to different data models.” Id. at 7:28–31, 39. In view of these disclosures, at this juncture, we are disinclined to view the term “context diagram” to require specific graphic characteristics. As Petitioner argues, and we agree, Nitz discloses a knowledge base, which stores rules, templates, and models, such as probabilistic, semantic, and contextual models. Ex. 1005, 14:26–31, 17:38–47, 18:19–37. The contextual model, for instance, includes information relating to a user’s interactions, such as interactions with a mobile device relating to electronic content, communications, or software applications. Id. at 18:19–23. Nitz’s knowledge base includes storage of related facts about a user’s behavior and interests, such as a person’s activity in relation to their normal routine (id., 17:5–23), or inferences regarding activities that may occur at certain times or logically follow other activities of the user stored in the probabilistic model (id. at 17:38–47). These disclosures support that Nitz teaches a context graph, that is, “an in-memory model that stores facts and assertions about a user’s behavior and interests.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“diagram requires graphical properties, such as a node representations, we credit Petitioner’s assertion that a person of ordinary skill in the art would have been motivated to arrange the models using known graph-based configurations. Pet. 17–18. Petitioner contends that the use of graph-based configurations would have provided “known way[s] to structure and maintain the contextual information/models in the knowledge base that would have facilitated efficient and effective access and analysis of such information for use in creating/presenting candidate actions.” Id. (citing Ex. 1002 ¶ 85). This assertion is supported by Mr. Smoot’s testimony (see id.) and is consistent with Nitz’s disclosures that the inputs regarding user activities are analyzed, categorized, or classified in different ways to create associations that are “related or logically connected in some way,” which includes tagging data with semantic information, or processing “using standard pattern recognition algorithms, clustering techniques, and/or other suitable methods” (Ex. 1005, 12:32–51). Mr. Smoot further testifies that a “person of ordinary skill in the art would have been aware that it was known to use graph-based structures with nodes, edges and topological characteristics to store, structure, and represent data in databases” for efficient access and it was also known that graphical models with nodes and edges were used to “enable representation of complex events and interactions.” Ex. 1002 ¶ 23 (citing Ex. 1015, 6:56–62, 7:54–8:9, Fig. 8; Ex. 1016 ¶ 44, Fig. 6). Thus, on this preliminary record, we find that there is support for the view that one of ordinary skill in the art would have been motivated to use a graphical representation, such as node diagrams, in Nitz’s models. Accordingly, at this juncture, we determine that Petitioner has” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The record shows that Petitioner presents the same or substantially the same prior art for merely one reference in a minor capacity as compared to the art previously presented to the Office. See Square Inc. v. 4361423 10 Patent Owner cites to pages 106–107 of the ’439 prosecution history, but, in context, the citation should be to pages 95–96. See Prelim. Resp. 1, Ex. 1004. Canada Inc., IPR2019-01650, Paper 11 at 6–9 (PTAB April 28, 2020) (Decision Granting Institution) (“Square Inc.”). That is, Patent Owner is correct that the Nykanen Application was cited in an Information Disclosure Statement, but the Examiner did not use it as the basis of any rejection or make any other reference to it. See Ex. 1004, 75, 96; see also id. generally. During prosecution, the Examiner rejected claims over another reference, Ravindra, and the associated rationale in the rejection is directed only to that reference. Id. at 87–89, 107–109. As we discuss above, Nitz is the primary prior art reference relied upon in the Petition. See e.g. Pet. 3–4, 8–28. That is, Nitz’s teachings are solely relied upon for the teachings of all the limitations of the independent claims, save for reliance on Nykanen in combination for teaching the portion of limitation 1[c] for registration for notification of changes. Therefore, in view of primary reliance on Nitz, there are material differences between the asserted art here and the prior art involved during examination (factor a). Further, Patent Owner does not contend that the asserted art (beyond Nykanen) is cumulative or that there is overlap, much less substantial overlap, between arguments during examination and Petitioner’s reliance on the prior art (factors b and d). And, Petitioner relies primarily on Nitz in its challenges, which was not at issue in the prosecution, and the arguments during examination were directed to a different reference, so we do not discern any overlap. Accordingly, and similar to the facts in Square Inc., neither condition of the first part of the two-part framework, that is, substantially the same art or argument, is satisfied for the exercise of discretion under 35 U.S.C. § 325(d). For the foregoing reasons, we are not persuaded that the same or substantially the same prior art or arguments previously were presented to the Office. Having determined that the first part of the Advanced Bionics framework is not satisfied, we need not consider the second part of the framework. See Advanced Bionics at 8, 10; Volkswagen Group of America, Inc. v. Michigan Motor Tech. LLC, IPR2020-00169, Paper 8 at 27 (PTAB June 2, 2020). For the foregoing reasons, we are not persuaded that we should exercise our discretion under § 325(d) to deny institution and we decline to do so.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - SAP SE v. Teradata US, Inc.InstitutedPTAB · Nov 17, 2021 · IPR2021-00855 · APJ Lynne E Pettigrew · IPR · Institution
Instituted IPR of claims 1–7, 26–33, and 52–57 on all asserted grounds after finding a reasonable likelihood of prevailing on obviousness over Deshpande ’98 and Shim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any 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). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’357 patent. Accordingly, we institute an inter partes review of claims 1–7, 26–33, and 52–57 of the ’357 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“privy.”). Accordingly, we determine that this factor does not weigh either for or against exercising our discretion to deny institution in this case.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have been motivated to combine the teachings of Deshpande ’98 and Shim for a variety of reasons, most notably because Deshpande ’98 explicitly states that in-cache aggregation is the next logical step in multi-dimensional cache development, and Shim advantageously provides an implementation of that aggregation suggested by Deshpande ’98. Pet. 38. Thus, Petitioner contends, a person of ordinary skill in the art “would have been explicitly directed to look for opportunities to improve on Deshpande ’98’s system via in-cache aggregation,” and that direction would have naturally led to Shim. Id. at 39 (citing Ex. 1006 ¶ 98). Relying on Dr. Lehner’s testimony for support, Petitioner contends that “[a]ccessing data from cache memory is well known to be significantly faster than accessing data from a database,” “[i]n-cache aggregation [as taught in Shim] increases the amount of cached data that is eligible for answering a current query,” “[m]ore eligible cache data . . . results in more cache hits,” and “a greater number of cache hits results in faster average performance.” Id. at 39–40 (citing Ex. 1006 ¶¶ 99–100). Petitioner also notes that Shim cites to Deshpande ’98. Id. at 41 (citing Ex. 1003, 10). Finally, Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success in implementing the combination of Shim and Deshpande ’98 in view of Shim’s example descriptions and pseudocode algorithms. Id. (citing Ex. 1006 ¶ 102).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“this stage of the proceeding. Pet. 16. Patent Owner agrees that most terms do not require construction, but disagrees as to the term “active cache,” recited in independent claims 1, 26, and 28. Prelim. Resp. 9. Patent Owner proposes construing that term to mean a “cache that can not only answer queries that match data stored in the cache, but can also answer queries that require aggregation or other computation of the data stored in the cache,” in accordance with the ’357 patent’s description of an “active cache.” Id. at 10; see Ex. 1001, 3:1–5. As Patent Owner points out, the Petition acknowledges that description of an “active cache” in the ’357 patent and appears to apply such a construction in its unpatentability analysis. Prelim. Resp. 9–10 (citing Pet. 35, 72). In view of the ’357 patent’s description of an “active cache,” at this stage of the proceeding we adopt the proposed construction of “active cache” as a “cache that can not only answer queries that match data stored in the cache, but can also answer queries that require aggregation or other computation of the data stored in the cache.” During trial, if appropriate, the parties may further address the construction of this term.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,763,357 - SAP SE v. Teradata US Inc.InstitutedPTAB · Nov 15, 2021 · IPR2021-00863 · APJ Russell E Cass · IPR · Institution
Instituted review of claims 1–3, 5–9, 11–13, 15, and 17–19 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Data Temperature” Petitioner argues that the term “data temperature” in claims 2–3, 8–9, and 12–13 “includes any value representing the number or frequency of accesses of particular data in storage, either in absolute or relative terms.” Pet. 11–12 (citing Ex. 1001, 8:44–47, 15:37–42, 18:24–27; Ex. 1003 ¶ 34). Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. Prelim. Resp. 17. At this stage of the proceeding, and based on the present record, we adopt Petitioner’s proposed construction of this term.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding, and based on the present record, we determine that Petitioner’s three proposed constructions of “persistent data temperature” are reasonable and, as discussed further below, that Petitioner has established a reasonable likelihood that “persistent data temperature” is disclosed or suggested by the prior art under any of the three constructions. For purposes of institution, we need not determine which of these three proposed constructions is correct; however, the parties may address this issue further if appropriate during the trial. 3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience.” Pet. 9 (citing Ex. 1003 ¶ 30). According to Petitioner, the person of ordinary skill would have been familiar with “DRAM cache, flash or other solid-state storage device[s], tape, optical media, and other well-known storage types,” “[c]oncepts of data ‘temperature,’” “[m]ulti-level storage tiers and managing data storage between volatile devices (e.g., cache) and non-volatile devices (e.g., disk) based on temperature,” and “[w]ell-known concepts such as volatile storage, non-volatile storage, and data persistency.” Id. at 9–10 (citing Ex. 1005, 2:23–38, 5:65–6:3, 21:33–43, 25:21–62; Ex. 1010 ¶¶ 3–4; Ex. 1004 ¶¶ 18– 52; Ex. 1001, 8:7–13). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 17. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’623 patent and the asserted prior art of record.” slip op. at 10
- Expert testimonyPetitioner expert creditedOther
“sufficiently established that Morris inherently discloses this element based on the evidence of record. Petitioner does not point to specific portions of Morris that expressly state that storage information associated with storage of data in the disk drive (such as temperature values 420 in Figure 4) are provided to the cache, or that indicate that this step is necessarily present in Morris’s system. For example, it appears that there might be other places for storing temperature information or other ways of providing that information to the cache. Additionally, Dr. Long does not explain why one of ordinary skill would have “necessarily” understood that Morris’s process would have checked data HEADER 410 in Figure 4 to see if it contained a temperature value, and then used this temperature value as part of the Figure 2 steps, rather than obtaining the temperature value from another source. However, we determine that, for purposes of institution, Petitioner has sufficiently shown that element 1.3 would have been obvious over Morris. Petitioner’s obvious argument is supported by Dr. Long’s testimony that, when using data temperature to determine whether data should be stored in the cache (as reflected in Figure 2), it would have been obvious to “check[] the data ‘HEADER’ (410 in FIG. 4) to see if it contained a ‘temperature value’ (420 in FIG. 4), and then us[e] this temperature value as part of the FIG. 2 steps.” Ex. 1003 ¶ 51. As Dr. Long explains, data objects 400 with headers 410 and temperature values 420 in Figure 4 are “stored on a disk drive.” Id. ¶ 46. Dr. Long further testifies that one of ordinary skill “would have recognized the expressly disclosed ‘temperature value’ variable” 420 stored on the disk “as the best measure of a given data object’s temperature and the first place to check for whether a disk-stored data object had an associated temperature.” Id. “Given the express disclosure of this [temperature value] variable” 420, Dr. Long continues, it “would have been a natural choice” for the person of ordinary skill in the art to use it “when evaluating whether to cache data being read from the disk,” and one of ordinary skill would have had a reasonable expectation of success in doing so. Id. Contrary to Patent Owner’s argument, this testimony provides logical reasons why one of ordinary skill would have provided the temperature value from the disk to the cache, and is not merely “conclusory.” We reach a similar determination as to Petitioner’s obviousness argument based on the process for determining whether data should be deleted from the cache in Morris’s Figure 3. Petitioner’s argument is supported by Morris’s statement that “[t]he data temperature is stored with the data object in the cache,” and Dr. Long’s testimony that it would have been obvious to have “this data temperature in the cache originate[] from the ‘temperature value’ retrieved from the disk when originally storing the data in the cache.” Ex. 1004 ¶ 53; Ex. 1003 ¶ 54. Dr. Long further explains that “it would have been obvious to implement the Morris system in this way because the temperature maintained on the disk was the most natural source for the value of the data temperature stored in the cache,” and one of ordinary skill “would have used that approach with a reasonable expectation of success.” Ex. 1003 ¶ 54. “In fact,” according to Dr. Long, “given that the temperature value was persistently stored with the data on the disk,” the disk “was the only logical source for a reliable temperature value when deciding whether to load the data into the cache,” because “[a]ny other source would have risked being inaccurate or out of date and would have needlessly and redundantly stored the temperature in another location.” Id. This testimony provides logical reasons why one of ordinary skill would have provided the temperature value on the disk to the cache.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,720,623 - SAP SE v. Teradata US Inc.InstitutedPTAB · Nov 15, 2021 · IPR2021-00861 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–16 and all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Based on the present record, we do not find Patent Owner’s proposed construction supported by the intrinsic evidence. The ordinary meaning of “manage the storage of data in the volatile storage” does not require limiting the number of copies of the data in the volatile storage, and Patent Owner does not argue to the contrary. Turning to the language of the other claims, we note that claim 5, which depends from claim 1, specifically includes additional language stating that the data is stored “only in one of two portions of the volatile storage,” but claim 1 does not include such language. The use of this additional limitation in dependent claim 5 suggests that the inventors did not intend it to be included within claim 1’s broader language reciting “manag[ing] the storage of data in the volatile storage.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315–16 (Fed. Cir. 2005) (en banc) (“the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim”). Turning to the ’923 patent specification, the portions of the specification Patent Owner relies on appear to discuss a preferred embodiment of the invention, rather than limiting the invention itself. The portions of columns 14 and 15 upon which Patent Owner relies discuss Figure 3 which, the specification explains, “depicts a volatile storage 300 that uses a persistent temperature-based storage management technique as well as a conventional storage management technique in accordance with one embodiment.” Ex. 1001, 14:48–51 (emphasis added); see id. at 5:5–8 (also describing Figure 3 as being “in accordance with one embodiment” of the invention). Interpreting claim 1 to require maintaining only a single copy of a data portion in either the first portion or second portion, where that language does not exist in claim 1, would be tantamount to reading a limitation from a preferred embodiment into the claims, which would be improper. See Philips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Patent Owner does not identify any portions of the specification suggesting that limiting the number of copies of the data in the volatile storage is a necessary part of the invention, or that the inventors intended to expressly or impliedly define “manage the storage of data in the volatile storage” to include this requirement. Consequently, at this stage of the proceeding, we do not adopt Patent Owner’s proposed construction requiring that “manag[ing] the storage of data in the volatile storage” requires “coordinating placement of data into and out of the volatile storage so as to limit the number of copies of the data in the volatile storage.” The parties may further address the meaning of this claim phrase during the trial, if appropriate.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working 2 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience as it typically involves at least two years of additional study focused exclusively on computer science, as well as a thesis or project spanning several terms to implement a substantial project.” Pet. 12–13 (citing Ex. 1003 ¶ 31). According to Petitioner, the person of ordinary skill would have “understood the advantages of partitioning a volatile memory into multiple different sections (e.g., buffer pools) and applying multiple different storage management (e.g., cache replacement) policies to those different sections, and known how to implement such designs.” Id. at 13 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 14. For purposes of institution, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’923 patent and the asserted prior art of record.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage of the proceeding, Petitioner has made a sufficient showing that Lee discloses this claim element. Paragraph 17 of Lee discloses the use of a temperature-based storage management technique and a non-temperature-based storage management technique (the LRU replacement policy), and that both “may be used to manage a cache.” Ex. 1004 ¶ 17. Based on the present record, Petitioner sufficiently shows that Lee’s disclosure of using these techniques “to manage a cache” involves “manag[ing] the storage of data in” the cache, because both techniques operate in order to control what data is stored in the cache. We do not find Patent Owner’s argument persuasive because it is based on Patent Owner’s proposed construction of “manag[ing] the storage of data in the volatile storage” to require “limit[ing] the number of copies of the data in the volatile storage,” which we do not adopt. See § II.A.2, supra. Consequently, we determine that, on the record before us, Petitioner’s cited evidence sufficiently supports its contentions regarding this limitation.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,851,923
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.