• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Apr 29, 2026 · IPR2024-01493 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5, 7–11, 14, and 15 are unpatentable as obvious; claims 2, 4, 6, 12, and 13 were not shown unpatentable because the references did not establish entirely crystallized CoFeB layers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’167 patent. Dec. on Inst. 6. Namely, we found that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Id. (citing Pet. 20 (citing Ex. 1024 ¶ 25)). We also found that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not address Petitioner’s definition, nor provide its own. See generally PO Resp. Because Petitioner’s definition of the level of skill in the art is consistent with the ’167 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Here, neither party sets forth any term for claim construction. Pet. 17; see generally PO Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “In addition, we agree with Petitioner and find that one of ordinary skill in the art “would have been motivated to replace either or both of Bowen’s electrodes with CoFeB to increase TMR and lower Hf [(coupling field)] and Hc [(coercivity)].” Pet. 24, 27; Ex. 1055,30 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105631 ¶¶ 67–68 (“[B]oth the ferromagnetic layers 5, 7 are made of an FeCoB”32 for “improvement of the TMR ratio.”); Ex. 1024 ¶¶ 129, 132. We credit Dr. Bokor’s cited testimony as it is consistent with the cited evidence. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 30 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 31 US 2004/0136232 A1, published July 15, 2004, to Hosomi. 32 We find persuasive Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. 36–44) (emphasis omitted). In addition, we agree with Petitioner that one of ordinary skill in the art “would have found it obvious to use Parkin’s CoFeB layer in place of Bowen’s electrodes to increase TMR” in light of Parkin’s explicit teachings. Pet. 27; Ex. 1024 ¶ 133. In particular, Parkin explicitly teaches that “very high TMR values are unexpectedly found for MTJs with highly textured (100) MgO tunnel barriers but with nominally amorphous storage layers.” Ex. 1062, 18:49–51. Notably, Parkin provides that “[t]he TMR of the device of F[igure] 3A is nearly two times higher than the highest TMR ever reported in prior art devices using conventional alumina tunnel barriers.” Id. at 18:63–65; Pet. 27. And as we discuss above, Parkin teaches that Figure 3A’s MTJ may be inverted, such that the storage layer is formed beneath the tunnel barrier. Ex. 1062, 17:7–10. In addition, we agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen in the manner Petitioner proposes, as forming electrodes with CoFeB alloys was known. Pet. 28. As Petitioner argues, “forming electrodes with CoFeB alloys in MTJs was known and had been successfully done,” and thus we are persuaded that “one of skill would have found it to be a straightforward, predictable, and desirable improvement to TMR, Hf, and Hc in Bowen’s” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We find unavailing Patent Owner’s arguments that Bowen teaches a “radically different manufacturing process[] from the claimed invention,” and that Bowen “went to heroic lengths to provide a crystalline (001) bottom electrode that provides a template for epitaxially growing a crystalline MgO(001) layer.” PO Resp. 2 (emphasis omitted). Patent Owner describes in detail Bowen’s specific manufacturing process, including the specific structure of the MTJ manufactured, and argues the claimed invention differs. PO Resp. 30–33. These arguments are inapposite. Petitioner cites the specific teachings Petitioner relies on from Bowen, rather than adopting the entirety of Bowen’s process or MTJ. See, e.g., Pet. 21–36 (citing the portions of Bowen—that in combination with Parkin—teach claim 1). Petitioner is not “compelled to adopt every single aspect of [Bowen’s] teaching without the exercise of independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). We also find unavailing Patent Owner’s argument that Bowen and Parkin each teach away from Petitioner’s combination because Parkin used boron to avoid crystalline electrodes whereas Bowen tried to achieve perfect crystalline electrodes. PO Resp. 4. As we discuss above, one of ordinary skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB to increase TMR. And Patent Owner does not identify in either reference a specific teaching that criticizes, discredits, or otherwise 35 M. Jimbo et al., Thermal stability of spin valves using amorphous CoFeB, 165 J. Magnetism & Magnetic Materials 308–11 (1997) (“Jimbo”). combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 23

  Patent outcomesUS 10,680,167 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,680,167
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Mar 27, 2026 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–2 are unpatentable as obvious over each Bowen-based combination; claims 3–4 were not shown unpatentable, and the Nagahama-based grounds failed for all claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Consistent with the Institution Decision (Dec. 7), we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art. Patent Owner does not dispute that Dr. Bokor is qualified as a person of ordinary skill in the art in accordance with the assessment adopted. See Tr. 90:9–15. Patent Owner, however, questions Dr. Bokor’s knowledge on the formation of crystalline materials and seeks to exclude his related testimony. See PO Resp. 1–2, 27; PO Mot. Excl. 12–15. We address this issue infra Section V.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 24. Patent Owner does not raise any claim construction issues in its Response. See generally PO Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes. 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 9

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised” in the patent owner response. 37 C.F.R § 42.23(b). The Consolidated Trial Practice Guide states that responding “does not mean proceed[ing] in a new direction with a new approach,” and “[w]hile replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered,” that is, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide § II.I (last updated Dec. 12, 2025) (“CTPG”), available at https://www.uspto.gov/patents/ptab/trial-practice-guide. We are not persuaded by Patent Owner’s assertions that Petitioner’s reply arguments on Parkin should not be considered. As discussed supra Section II.D.3.i above, the Petition includes the assertion that if Parkin’s CoFeB electrodes were used to modify Bowen, the MgO polycrystalline or single-crystal layer would still have the same 001 orientation. Pet. 33–34 (citing Ex. 1024 ¶ 129; Ex. 1062, 9:58–10:2, 18:49–51; Ex. 1005, 4:30–32). Petitioner’s support in the Petition references disclosures relating to Parkin’s Figure 3A (Ex. 1062, 18:49–51), which discloses a MgO(100) tunnel barrier, and the Petition also notes that the structure of Figure 3A may be inverted. Pet. 40 (citing Ex. 1062, 17:7–10). Patent Owner’s arguments, in large part, are related to Petitioner’s arguments in the Reply relating to Parkin’s Figure 11. Parkin’s Figure 11 is an embodiment where the structure of the devices of Figure 3A is inverted. See Ex. 1062, 22:29–33. We do not find that Petitioner’s arguments that are at issue in the Reply represent a new direction in its approach—the Petition is clearly based on the assertion that if Parkin’s CoFeB electrodes are used in Bowen, the device would have a MgO(001) tunnel barrier layer. Further, the Petition refers to Parkin’s disclosure that the device in Figure 3A may be inverted, which would be encompassed by the Figure 11 embodiment. Moreover, in the Institution Decision, we invited additional briefing on whether Parkin’s storage magnetic electrode was an amorphous ferromagnetic electrode, which relates to Parkin’s Figure 11 (Dec. 28–29). We are also not persuaded by Patent Owner’s argument that the Petition’s assertions do not correspond to what Petitioner argues in the Reply because they were referred to in the section pertaining to limitation 1[e]. The Petition includes a cross-reference in the limitation 1[d] discussion on the tunnel barrier layer limitation: “if Sunai’s or Parkin’s CoFeB electrodes are used as described in Claims 1[e] and 2 in this Ground, one of skill would understand that the MgO . . . would still have the same (001) orientation.” Pet. 33. Further, Petitioner’s arguments in its Reply properly respond to arguments made on contested issues. Patent Owner’s contentions on the merits in its Response are largely based upon the assertion that the modified MTJ of Bowen would not have a MgO(001) layer as claimed. See PO Resp. 4–10, 18–48. Petitioner’s reply arguments on Parkin relate to whether there would be a MgO(001) layer in its structure, so we find that Petitioner’s arguments on Parkin in its Reply (Pet. Reply 2–5) and the related evidence are appropriately responsive. slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that there is sufficient evidence in support of Petitioner’s assertion of the rationale to replace Bowen’s electrodes with CoFeB and anneal them. As discussed supra Section II.D.ii.2, Parkin’s Figure 11 depicts and describes a storage electrode that may be composed of amorphous CoFeB, with the formation of a MgO(001) barrier layer atop it. See Ex. 1062, 22:29–66. Patent Owner argues that Parkin’s benefits are because its CoFeB electrode is amorphous (PO Resp. 51–52), but this is not accurate. In Parkin, the CoFeB amorphous electrode crystallized at the interface layer between the barrier and the electrode. Id. at 19:6–19. Parkin discloses that higher TMRs were attributable to the crystallization of CoFeB. Id. at 18:63–19:22. Parkin also discloses that its completed CoFeB- MgOH(001)-CoFeB device was annealed with resulting high TMRs. Id. at 17:60–18:16. These disclosures provide support that one of skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB and anneal to crystallize them because of the known improvements of TMR. Additionally, Parkin’s disclosures support that the results of the combination would have been predictable. That is, Parkin actually discloses an amorphous CoFeB electrode, formation of a MgO(001) tunnel barrier on the amorphous electrode, and annealing the assembly, with a resulting high TMR. Accordingly, Petitioner has provided reasoning with rationale underpinning for the motivation to combine. See KSR, 550 U.S. at 415 (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).” slip op. at 31

  Patent outcomesUS 8,405,134 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,405,134
• Luxottica Of America Inc. v. E-Vision Optics, LLCSome claims unpatentable
  PTAB · Dec 23, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–20, 22–31, and 33–37 are unpatentable; claims 21 and 32 were not shown unpatentable, principally because the proposed combinations failed to establish motivation to combine or the required airtight seal.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that the proposals from the parties substantially overlap, such that it remains unclear whether any substantive difference exists. Notably, neither party argues that the minor differences in the proposals lead to a different outcome on any issues in this proceeding. Based on our review of the proposals, we apply Patent Owner’s proposal because it is consistent with the problems and solutions disclosed in the ’483 patent and prior art of record. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). The outcome of the issues addressed in this Decision would not change if we applied Petitioner’s proposal.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “hermetically sealed” module does not encompass waterproof modules that are not airtight. First, as Petitioner admits, as a general matter, “[s]omething that is hermetically sealed is sealed so as to be airtight.” Pet. 28 (citing Ex. 1002 ¶ 103; Ex. 1010, 269); PO Sur-reply 16. Petitioner later tries to argue that the specification puts a different spin on this meaning, but still acknowledges that “[o]utside the context of the ’483 patent, a hermetic seal is sometimes equated with an airtight seal.” See Pet. Post-hearing 2–3 (citing Ex. 1002 ¶ 103; Ex. 1010, 269). Based on our review of the record, the “ordinary meaning” of “hermetically sealed” means “airtight,” and, as noted above, “airtight” is not the same thing as “waterproof.” Second, the claims support Patent Owner’s position by including dependent claims that separately claim a “hermetically sealed” module (claims 13 and 32) and a “waterproof” module (claims 15 and 34), strongly suggesting that the terms have a different scope to avoid rendering some claims redundant. See Ex. 1001, 11: 65–66, 12:3–4, 12:52–53, 12:55–56. Petitioner argues in its Post-hearing brief that claims requiring waterproof modules are “a narrower species” of hermetic seal, but fails to explain how hermetic, airtight, and waterproof seals would not fall within the scope of both claims using its approach. Pet. Post-hearing Reply 2. Petitioner’s earlier argument in its Reply also seems to cut against this position by asserting that the specification “treats hermitically sealing as conventional and equivalent to waterproofing,” with different dependent claims directed to two allegedly “equivalent” terms making little sense. Pet. Reply 14 (emphasis added). The most natural reading of the claim language suggests that “hermetically sealed” means airtight, and does not encompass modules that are waterproof but not airtight. Third, while the specification does not define “hermetically sealed” and uses “waterproof” and “hermetically sealed” in similar contexts, it does not suggest that “hermetically sealed” does not require an airtight seal consistent with its ordinary meaning. See Pet. Reply 14–15 (citing Ex. 1001, 6:47–53, 9:15–18, 10:47–50). Instead, the specification states that hermetic seals prevent water from contacting electronics, which remains consistent with Patent Owner’s position because airtight hermetic seals are also waterproof. See Ex. 1001, 6:47–53, 9:15–18. The specification also states that “[t]he module preferably houses any of the aforementioned electrical components in a substantially water-proof and wear resistant/moisture resistant environment and is preferably hermetically sealed.” Id. at 10:47–50 (emphasis added). This passage supports Patent Owner’s position by suggesting that the preferable “hermetically sealed” module goes beyond mere water resistance. See PO Sur-reply 16–17. slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “2. Petitioner’s Anticipation Arguments and Evidence Petitioner argues that Howell-596 discloses every limitation of claims 1, 9, 10, 14, 15, and 18, and points to specific portions of Howell-596 and expert testimony to support its arguments. See Pet. 10–20 (citing Ex. 1002; Ex. 1003). We have reviewed the evidence and arguments of record and find that Petitioner has shown, by a preponderance of the evidence, that the limitations in claims 1, 9, 10, 14, 15, and 18 are disclosed by Howell-596 for the reasons set forth in the Petition, which we adopt as our own. See id.11 Accordingly, we find that Petitioner has established, by a preponderance of the evidence, that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Based on these undisputed points and the parties’ arguments, we agree with Patent Owner that Petitioner fails to establish that a POSITA would have been motivated to locate Howell-596’s module housing 1700, which contains its UV detection system 1500, behind a user’s ear. Petitioner never squarely addresses the fact that placing Howell-596’s UV detection system behind a user’s ear would negatively impact its performance. Pet. 31–33; Pet. Reply 17–22. As a result, even if we accept Petitioner’s arguments and evidence as to the various advantages when placing electronics behind a user’s ear, it fails to establish a motivation to combine that requires placing Howell-596’s module housing 1700, and therefore its UV detection system, behind a user’s ear. Petitioner never acknowledges the readily apparent disadvantages of placing a UV detection system behind the ear, where it may not work at all. See Pet. 31–33. Nor does Petitioner argue that, in its combination, adjustments would be made to ensure accurate operation of Howell-596’s UV detection system. See id. Similarly, Petitioner notes that both Howell-596 and Howell-833 disclose UV sensors behind the ear of a user, but those teachings do not establish that placing Howell-596’s module behind the ear would ensure proper operation of its UV detection system housed within that module. See Pet. Reply 17–22. Instead, even though Howell-596 discloses a sensor behind the ear of a user, it maintains the UV detection system in a module toward the front of the temple, away from the ear. See id. at 18–19; PO Surreply 21–22; Ex. 1003 ¶ 205 (describing UV detection system 2102), Fig. 21 (showing UV detection system 2102 toward the front of the temple). Moreover, Petitioner’s reliance on the sensor placed behind the ear of the user in Howell-596 lacks weight because that sensor merely indicates that the device “is being worn by a user,” which serves a very different purpose than Howell-596’s UV detection system, which seeks to monitor a user’s exposure to UV radiation, a central purpose of Howell-596’s eyewear. See Ex. 1003 ¶ 205, code (57). Howell-833 also employs a UV sensor behind the ear, but Petitioner does not establish that it operates any differently than the “being worn” sensor in Howell-596, and therefore does not establish that Howell-596’s UV detection system would still work for its intended purposes in Petitioner’s proposed combination. See Pet. Reply 19–20.” slip op. at 29

  Patent outcomesUS 8,708,483 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,708,483
• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00577 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either Robertson, Gralla, and Gettman or Sauve and Tsuda; claims 1–13 were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “4. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “predictably improved Sauve’s quick pick interface, and would have promoted space efficiency and conveyed order more clearly. Id. at 59–60 (citing Ex. 1003 ¶ 159). Petitioner further argues that the combination would have exploited spatial memory and more efficient use of screen space and, thus, would have been a differentiator among competing web browsers. Id. at 60–61 (citing Ex. 1003 ¶¶ 160–162). Petitioner argues that a skilled artisan would have had a reasonable expectation of success in making the combination because GUIs, web browsers, and simulated 3D environments were all well-known technologies that had been demonstrated successfully in the real world. Id. at 61 (citing Ex. 1003 ¶ 163). Dr. Fuchs’ testimony has rational underpinning, is logical and well-reasoned, and, accordingly, we give it substantial weight.” slip op. at 64

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Motherson Innovations Co., Ltd. v. Magna Mirrors Of America, Inc.Some claims unpatentable
  PTAB · Oct 5, 2021 · IPR2020-00777 · APJ Jessica C Kaiser · IPR · Final written decision

  Claims 1, 2, 5, 8–11, 15, 16, 26, and 34–36 are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Petitioner asserts a person of ordinary skill in the art “would have” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “a preponderance of the evidence that claims 1, 2, 5, 8–11, 15, 16, 26, and 34–36 of the ’648 patent are unpatentable, but has not shown by a preponderance of the evidence that claims 3, 4, 6, 7, 12, 13, 17–25, and 27– 33 of the ’648 patent are unpatentable, as summarized in the following table: Claims” slip op. at 75

  Patent outcomesUS 10,261,648 mixed
  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,261,648
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 2, 7, 16, and 18 are unpatentable as obvious over Riddle, Ferdinand, and Wakeman; claim 3 was not shown unpatentable because the associative-cache obviousness showing lacked sufficient evidence and reasoning.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art and, thus, begin with the level of ordinary skill in the art. The level of ordinary skill in the art is “a prism or lens through which . . . the Board views the prior art and the claimed invention” to prevent hindsight bias. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). “[O]ne or more factors may predominate.” Id. Petitioner contends that an ordinarily skilled artisan would have “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 7–8 (citing, inter alia, Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’646 patent and the asserted prior art. Inst. Dec. 25– 26. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. art, as we did in the Institution Decision. Inst. Dec. 25–26. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’646 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “heart of the parties’ dispute (Ex. 1001, 2:37–45), we determine that the “for instance” phrase is exemplary and does not limit a “conversational flow” to a specific client or user. The phrase “for instance” is synonymous with “for example,” and necessarily indicates that “the running of an application on a server as requested by a client” exemplifies, but does not limit, the conversational flow to a server and a specific client or user. Our determination that the “for instance” phrase is exemplary and non-limiting is consistent with Patent Owner’s argument in its Preliminary Response that the “some” phrase (“some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and server”) is non-limiting. Specifically, Patent Owner argued that the use of the word “some” necessarily means that “some conversational flows involve multiple connections, while, some involve a single connection.” Prelim. Resp. 24. Similarly here, while “conversational flow” certainly may involve the running of an application on a server as requested by a single client or user, “conversational flow” is not limited to a single client or user.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner has shown by a preponderance of the evidence that the combination of Riddle and Ferdinand renders obvious the recited flow-entry database limitations in view of the proper construction of “conversational flow.” See supra § III.C. Petitioner’s assertions, which we adopt, are supported by the cited evidence and are persuasive. Moreover, we are persuaded that a person of ordinary skill in the art would have been motivated to combine the teachings of Riddle and Ferdinand as proposed by Petitioner and supported by the testimony of Dr. Weissman. See Pet. 25–27 (citing Ex. 1006 ¶¶ 256–257, 259).” slip op. at 44

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “not established by a preponderance of the evidence that claim 3 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to claim 3 does not even cite Wakeman, but instead cites only the testimony of Dr. Weissman and the specification of the ’646 patent. See Pet. 75–76.12 And neither Dr. Weissman’s testimony nor the ’646 patent provides any persuasive support for Petitioner’s assertion that “a [person of ordinary skill in the art] would have understood that Wakeman’s CAM cache is fully associative due to Wakeman not disclosing a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” We agree with Patent Owner that “Dr. Weissman does not explain why the absence of a discussion of a cache placement policy in Wakeman would lead a [person of ordinary skill in the art] to just assume that Wakeman was teaching using of an associative cache placement policy,” and that his testimony in this regard is entitled to little, if any, weight. PO Resp. 58; 37 CFR § 42.65(a). As Patent Owner contends, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not 12 To be sure, the discussion of claim 3 in the Petition also includes an internal cross-reference to the “discuss[ion] regarding element 1.3,” i.e., the “cache subsystem” limitation of claim 1, discussed at Pet. 57–59. Although the discussion of that limitation does include citations to Wakeman (see Pet. 58 (citing Ex. 1014, 1:20–28, 1:55–67, 2:31–49, 3:36–45, 4:31–40, 5:22–27, Figs. 2, 3)), however, notably absent from that discussion is any assertion that Wakeman specifically suggests an associative cache. motivated to implement Wakeman’s cache as a fully associative cache. Id. (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418), and we do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 3 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 59

  Patent outcomesUS 6,771,646 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,771,646
• Polycom, Inc. v. Directpacket Research, Inc.Some claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01234 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 2–5, 15–17, 23–26, 29, and 30 are unpatentable over the stated obviousness grounds; claims 8, 9, 19, 20, 27, and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed skill level, that is, that one of ordinary skill in the art would have a Bachelor’s degree or equivalent in electrical engineering, computer engineering, or similar field, and at least two years of experience in a relevant field such as telecommunications or multimedia communications. Inst. Dec. 20. We also agreed with Petitioner that one of ordinary skill would have some familiarity with the design and implementation of VoIP and multimedia networks. Id. We did not agree, however, that the level of qualifications included monitoring and maintaining VoIP and multimedia networks, as Petitioner asserted, and therefore declined to adopt those requirements. Id. ordinary skill in the art adopted in the Decision on Institution to include “familiarity with the design and implementation of VoIP and multimedia networks,” but further described this requirement to include other requirements: an understanding of the techniques employed by network firewalls and the issues they present with respect to establishing and conducting multimedia communication sessions; an understanding of the performance demands placed on the network by multimedia communications, and the constraints that such demands place on processing and security measures that could be adopted; and a recognition of the distinctions between prior art firewall traversal solutions and the inventions of the ’978 Patent. PO Resp. 21–22. Patent Owner refers to GPAC, which identifies the factor of the “type of problems encountered in the art” as a consideration in determining the level of ordinary skill in the art. Id. at 22 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We have reviewed the relevant technology and claims of the ’978 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those adopted in the Decision on Institution because they are commensurate with the relevant technology. These qualifications are similar to presented by Petitioner, with the” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner relies on the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Pet. 20. Patent Owner indicates that its arguments are also based upon the ordinary and customary meaning of the terms as they would be understood by one of ordinary skill in the art. PO Resp. 22. We determine that it is not necessary to provide an express interpretation of any of the terms of the claims. 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 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “As discussed above, we agree with Petitioner that Kirchhoff discloses the use of SSL, a protocol that uses data encryption (Ex. 1005, 8:47–49). We also agree with Petitioner that Krtolica discloses the use of HTTP protocols on port 80 (Ex. 1004, 6:23–24), and does so with a goal of maintaining high network security (id. at 1:7–10, 2:33–36). As Kirchhoff discloses, and Dr. Lavian’s testimony supports, one of ordinary skill in the art would have been aware that port 443, rather than port 80, would be used for secure web connections using SSL, which includes the use of encryption, and this would have resulted in enhanced network security. See Ex. 1005, 3:38–41; Ex. 1002 ¶¶ 52, 69, 108. As Dr. Lavian testifies, SSL/TLS was the most widely deployed security protocol in the world and the well-known use of SSL in HTTPS protocol enables secure web-based e-commerce. Ex. 1002 ¶¶ 69, 108; Ex. 1035 ¶ 8; Ex. 1006, 5. And, Krtolica has a stated goal to maintain network security. Ex. 1004, 1:7–10, 2:33–37. We find this evidence provides a sufficient rational underpinning in support of obviousness for combining the teachings of Krtolica and Kirchhoff. See KSR, 550 U.S. at 418. Owner’s arguments that use of encryption in SSL was optional and adding encryption would allegedly undermine network security. Nor do we find persuasive the argument that the Petitioner’s motivation to combine based on efficiency is insufficient, because Petitioner relies on another rationale for the combination of Krtolica and Kirchhoff, that is, enhanced network security, also discussed above. We additionally do not find persuasive Patent Owner’s arguments that combining Krtolica and Kirchhoff would render the system of Krtolica unsatisfactory for its intended purpose because, as Petitioner argues, this assertion is contradicted by the state of the art at the time. See Pet. Reply 9. As discussed above, Dr. Lavian explains that there were known systems having firewalls with SSL traversal at the time of the invention. Ex. 1002 ¶¶ 53, 59–65; Ex. 1035 ¶ 20; Ex. 1014. Moreover, the ’978 patent uses encryption with firewalls using a single-port protocol, and Patent Owner does not direct us to any disclosure in that patent that indicates that the use of encryption with a single-port protocol was inventive in that the system, or that encryption had to be done in a special manner. See Pet. Reply 3 (citing Ex. 1001, Fig. 3 (at 311, 341), Fig. 5 (503, 508)); see also Ex. 1001, 6:4–8. In a similar vein, Patent Owner argues that due to incompatibilities the combination of SSL with Krtolica would be unsuccessful, and we address this issue below.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Where the prior art contains “apparently conflicting” teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill . . . consider[ing] the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In Hosner, AES encryption appears to have one of the higher processing speeds of the algorithms tested. See Ex. 1006, 23. Further, the ’978 patent itself supports the acceptable performance of AES encryption in single-port protocol, stating that “[a]ny method or algorithm of encryption may be used” with its invention “including, but not limited to 128-bit find Patent Owner’s argument on the use of AES to be persuasive. We have reviewed Petitioner’s explanations and supporting evidence as to how the combination of Kirchhoff and Krtolica teach the limitations of claims 4, 16, and 24, and we agree with and adopt Petitioner’s analysis. Pet. 75–76, 81.” slip op. at 65

  Patent outcomesUS 7,710,978 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,710,978
• Apple Inc. v. MPH Technologies OYSome claims unpatentable
  PTAB · Nov 4, 2020 · IPR2019-00823 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5–8, and 10 are unpatentable as obvious; claims 2, 4, 9, and 11 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’494 patent as one who would have had “a Bachelor’s (B.S.) degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the field of Internet security.” Dec. on Inst. 7–8 (citing Pet. 17; Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute our adoption of Petitioner’s definition, nor otherwise address the level of ordinary skill at the time of the invention of the ’494 patent. See generally PO Resp.; see also Ex. 2002 ¶ 22. Because Petitioner’s definition of the level of skill in the art is consistent with the ’494 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below. IV.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “A. Unique Identity In the Petition, Petitioner argues that “unique identity” means “one or more parameters that uniquely identify a secure connection.” Pet. 18. In our Decision on Institution, “we concluded that no express claim construction of the term ‘unique identity’ [wa]s necessary” because in its Preliminary Response “Patent Owner d[id] not argue that RFC3104 or Grabelsky fails to disclose this term and, therefore, this term is not in controversy.” Dec. on Inst. 9 (citations omitted). In the subsequent papers, the parties confirm “that there is no reason to construe this term” because “Patent Owner does not dispute that some form of a unique identity is found in the primary reference.” PO Resp. 20; see also Pet. Reply 8 (agreeing that this term need not be construed). Accordingly, we find that no express construction of “unique identity” is needed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Specification support its proposed construction for this term. First, we find that Patent Owner conflates “mobility” with “mobile computer.”5 The Specification states that “the term mobility . . . meant moving from one network to another,” rather than the term “mobile computer” having this meaning. Ex. 1001, 4:34–38 (emphasis added). Moreover, the Specification uses the term “mobility” as a capability or condition. For example, the Specification uses the term “mobility” as follows: (i) certain “protocols are not well suited to mobility”; (ii) “[t]he intermediate host might be a Mobile IP home agent, that provides mobility for the connection between the mobile terminal and the home agent . . . .”; (iii) a disclosed “method solves the mobility problem, at the cost of adding extra headers to packets”; and (iv) “[o]ne example of a change in the [security association (‘SA’)] between the first computer and the intermediate computer is the change of addresses for enabling mobility.” Ex. 1001, 5:7–8, 5:17–21, 5:33–34, 7:56–58 (emphases added). In other words, mobility is a capability a mobile computer has, rather than being synonymous with mobile computer. As such, these passages from the Specification support Petitioner’s construction” slip op. at 17

  • Strike new argumentNot reached

    “Lastly,12 we find that Patent Owner’s remaining arguments for this limitation are premised on either its (i) proposed construction (i.e., a mobile computer is “a computer that moves from one network to another as opposed to a computer that is only capable of a static secure connection”), which we do not adopt; or (ii) inapposite argument that the mobile computer needs to 12 We need not, and thus do not, reach whether Petitioner’s arguments for this limitation in its Reply (Pet. Reply 8–14) are new arguments, as Patent Owner argues in its Sur-Reply (PO Sur-Reply 13–24), because we do not rely on them, but instead, we rely on Petitioner’s arguments, and citations to the record evidence, from the Petition. maintain the same secure connection. See PO Resp. 25–51. Thus, we find these arguments unavailing. Likewise, Dr. Borella’s declaration testimony is not helpful to our analysis as his “declaration employs the assumption that the ‘mobile computer’ recited in the claims moves from one network to another,” which is contrary to our construction, as we discuss above. Ex. 2010 ¶ 42; supra Section IV(B) (construing mobile computer).” slip op. at 37

  Patent outcomesUS 9,712,494 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,712,494
• Ingenico Inc. v. Ioengine, LLCSome claims unpatentable
  PTAB · Sep 21, 2020 · IPR2019-00879 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 2, 4–8, 13–16, 19–21, 24, 25, and 27–29 are unpatentable as anticipated by Iida; claims 3, 10–12, and 26 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Decision on Institution, we determined that Petitioner’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’969 patent. Inst. Dec. 24. Patent Owner does not challenge this determination and states that it has applied the Board’s adopted definition of one of ordinary skill in the art. PO Resp. 2. Dr. Butler testifies that the adopted level of art in the art would not have any effect on the opinions presented in his declaration, even though Dr. 6 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. Butler had previously presented a different proposed qualifications. Ex. 2011 ¶ 13. Accordingly, for the reasons given in the Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill, which is that a person of ordinary skill in the art should have:” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “1. “interactive user interface” In the Decision on Institution, we construed the term “interactive user interface” (“IUI”) as “a display with which a user may interact to result in the portable device taking action responsively.” Inst. Dec. 19. The parties have presented additional arguments in additional briefing on the term’s construction, which we have further considered, and, as discussed below, we modify the interpretation of the term. See PO Resp. 7–16; Pet. Reply 1–3. a. Petitioner’s Assertions In the Petition, Petitioner asserts that the term “interactive user interface” should be interpreted as “a display with which a user may interact to result in the computer taking action responsively.” Pet. 14. Petitioner argues that this proposed interpretation is consistent with the plain and ordinary meaning of the term. Id. at 13. Petitioner also contends that although the term “interactive user interface” is not used in the ’969 patent specification, the specification consistently describes the terminal output component as a “display mechanism,” and the interactive user interface is presented on the terminal output component in the claims. Id. (citing Ex. 1001, 4:40). Petitioner contends that a number of displays in the ’969 patent respond to text inputs from an input component to elicit a responsive action, and refers to an example of the input of registration information in screen 515 in Figure 5, where, if the input is successful, follow-up screen 517 is produced, but otherwise there is an error message. Id. at 13–14 (citing Ex. 1001, 9:52–54, 7:53–56). In its Reply, Petitioner asserts that the ordinary meaning of the term “interactive user interface” is “a presentation (display) with which a user may interact to result in the computer (portable device) taking action responsively.” Pet. Reply 1. This is similar to the construction that Petitioner previously proposed in the Petition, however, Petitioner now proposes that the “computer” can be considered to be a “portable device,” and a “display” can also be considered to be a “presentation. See Pet.14. According to Petitioner, the claims require that the interactive user interface be presented on the terminal output component. Pet. Reply 1. Petitioner argues that the specification describes that it is a portable device that responds to user interaction with the IUI, such as the interaction with a login screen text box. Id. at 2 (citing Ex. 1046, 52:11–55:13; Ex. 1001, 7:55–56). Petitioner asserts that the claims require that it is the portable device that responds to user interaction, with the “fourth program code” executing in response to user interaction with the interactive user interface. Id. Petitioner compares the claim of the parent ’047 patent, which was narrowed to refer to “the interactive user interface is configured to enable the user to cause the portable device processor to execute program code stored on the portable device memory,” to the claims here. Id. Petitioner also asserts that “‘[p]resentation’ is used and described in the ’969 patent as corresponding to a ‘display.’” Id. at 1.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “2. Analysis A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “obviousness, we need not determine whether Patent Owner’s evidence of objective indicia of nonobviousness weighs even further against a conclusion of obviousness. See Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding, in affirming Board decision determining that petitioner had not shown unpatentability, that “objective indicia of nonobviousness” “need not [be] addressed” because the court “affirmed the Board’s findings regarding the failure of the prior art to teach or suggest all [claim] limitations”); Palo Alto Networks, Inc. v. Finjan, Inc., 748 F. App’x 317, 324 (Fed. Cir. 2018) (non-precedential) (affirming Board decision holding that petitioner failed to establish unpatentability due to a lack of disclosure of a claim limitation, without reaching secondary considerations, and holding that “it was not necessary for the Board to consider” expert testimony “limited to the issue of secondary considerations”).” slip op. at 78

  Patent outcomesUS 9,059,969 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,059,969
• Ingenico Inc. v. Ioengine, LLCSome claims unpatentable
  PTAB · Sep 21, 2020 · IPR2019-00929 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 55, 57–63, 67–72, 74, 77, 78, 81–87, 89, 92–98, 100, 103, 104, 106–112, 116–121, 123, and 126–129 are unpatentable; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the Board’s adopted definition of a POSITA. PO Resp. 3; Ex. 2139 ¶¶ 12, 13. Both parties’ experts state, however, that their opinions would not change based upon which party’s definition of a POSITA is adopted. Ex. 2139 ¶ 13; Ex. 2110, 240:24–241:6.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “For these reasons, we find that Petitioner has shown by a” slip op. at 40

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “meet claims 74, 89, 100, and 123 because Davis “does not have two different devices on the client side.” PO Resp. 63–64. Patent Owner’s argument does not persuasively rebut Petitioner’s obviousness case, which relies on Iida, not Davis, to teach two devices on the client side—Iida’s digital camera 12 (a portable device) and terminal 14. Pet. 13–16, 60; Ex. 1003 ¶ 57, Figs. 1A, 1B. Furthermore, in Petitioner’s combination, a digital certificate is substituted for Iida’s user ID and password. Pet. 61. Patent Owner does not dispute Petitioner’s contention that Iida discloses transmitting a user ID and password stored in memory 48 of camera 12 to image server 18 through terminal 14. Id. at 43–44 (addressing claim 71; citing Ex. 1003 ¶¶ 110, 113). Accordingly, Petitioner persuades us that the combination of Iida and Davis discloses the limitations of claims 74, 89, 100, and 123 (and claims 71, 86, 97, and 120 from which they depend).” slip op. at 89

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “First, Patent Owner has not argued that the licensed products are coextensive with the claims of the ’703 Patent, accordingly, there is no presumption of a nexus. See Lectrosonics, Paper 33 at 33.” slip op. at 94

  Patent outcomesUS 9,774,703 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,774,703

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.