• Netskope, Inc. v. Bitglass, Inc.Institution denied
  PTAB · 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 denial
  Patents in suitUS 10,757,090
• Netskope, Inc. v. Bitglass, Inc.Instituted
  PTAB · 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 · Graham
  Patents in suitUS 10,757,090
• Netskope, Inc. v. Bitglass, Inc.Institution denied
  PTAB · 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 denial
  Patents in suitUS 10,855,671
• Netskope, Inc. v. Bitglass, Inc.Instituted
  PTAB · 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 · Graham
  Patents in suitUS 10,855,671
• Micron Technology, Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 6, 2021 · IPR2020-01008 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–4 are unpatentable: claims 1, 2, and 4 are anticipated by Yanagawa, and claim 3 is obvious over Yanagawa and An.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id.” slip op. at 8

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

    “Based on the full record developed during trial, we see no reason to deviate from the preliminary interpretation adopted in the Decision on Institution, and incorporate our previous analysis herein. See Dec. on Inst. 24–30. We also note that the district court’s note for the jury is generally consistent with our preliminary interpretation, but has a different focus. The district court’s note focuses on where the channel forms relative to the gate our interpretation focuses on where the channel forms relative to the semiconductor substrate (i.e., “at the surface” of the semiconductor substrate). Claim 1 recites that each of the two surface-channel-type MOSFETs has a gate insulating film formed “on” the semiconductor substrate; thus, a channel that forms at the surface of the semiconductor substrate would be immediately below the gate insulating film. Further, dependent claim 2 recites relative dopant concentrations “in the channel region” of each surface-channel-type MOSFET. Given the pertinent extrinsic evidence cited in the Decision on Institution, particularly the Chen textbook, we are persuaded that the focus on where the channel forms relative to the recited semiconductor substrate is correct. We interpret “surface-channel-type MOSFET” to mean “a MOSFET in which the channel forms at the surface of the semiconductor substrate, rather than slightly under the surface,” and conclude that no other terms require express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citations omitted)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Having reviewed all of the parties’ arguments and cited evidence, we agree with Petitioner. First, whether a transistor is surface-channel or buried-channel depends on the structure of the transistor rather than the mode or conditions under which it may operate at different times. Consistent with our interpretation based on Chen and other evidence, a transistor’s structure (e.g., the structure and doping of its channel region) defines where the channel between the source and drain regions will form when the transistor is ON. A buried-channel transistor is typically formed by doping the channel region with the same type of dopant as the source and drain regions, such that when ON, a channel forms below the surface of the semiconductor substrate, rather than at the surface. Chen explicitly states that it is “[t]he presence of [the] surface layer” with dopant of the same type as the source and drain regions that “changes normal MOSFET operation from surface-channel conduction to buried-channel conduction.” Ex. 1014, 29 (emphasis added), Figs. 2.17(a), 2.17(b). Chen states that the source and drain regions are connected “unless [the] layer is fully depleted by applying the appropriate gate voltage.” Id. at 29. But Chen never states that operating conditions of the MOSFET impact whether the device is surface-channel or buried-channel; rather, it is the “presence” of the surface layer in “normal” conditions that makes it buried-channel. Van der Tol similarly states that a “buried-channel MOSFET is typically realized” by implanting a surface layer of dopant of the same type as the source and drain regions. Ex. 1016, 1. And two textbooks include similar disclosures as well. BiCMOS Technology and Applications (A.R. Alvarez ed.) (1993) (Ex. 1043, “Alvarez”), describes “surface-channel” MOSFETs as “the case when the polysilicon gates are at 8. Alvarez then describes an alternative where “the PMOS channel [is] counterdoped to achieve [a] desired threshold . . . . This produces a buried-channel device.” Id. (emphasis added). Neil H. E. Weste & Kamran Eshraghian, Principles of CMOS VLSI Design: A Systems Perspective (1993) (Ex. 1045, “Weste”), similarly explains that adjusting the threshold voltage of a p-device “is done by introducing an additional negatively charged layer at the silicon/oxide interface. This moves the channel from the silicon/oxide interface further into the silicon, creating a ‘buried channel’ device.” Id. at 20 (emphasis added). Thus, the “normal,” or “typical[],” understanding of a person of ordinary skill in the art is that a transistor may be “change[d]” into a buried-channel transistor by doping the channel region to create a thin surface layer of the same type of dopant as the source and drain regions. See Ex. 1014, 29; Ex. 1016, 1. Doping in that manner causes the channel to form below the surface; absent such a change to the normal conditions, the transistor’s structure will cause channel formation at the surface. Yanagawa has no such doping that would make it a buried-channel transistor. See Pet. 19–20, 31–32; Ex. 1003 ¶¶ 63–64, 73, 91–93.” slip op. at 29

  Patent outcomesUS 6,445,047 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,445,047
• Micron Technology, Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01009 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1 and 4–6 are unpatentable as obvious over Hidaka-based combinations; the Aoyama-based grounds do not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. Petitioner states that it assumes an effective filing date of August 7, 2002, for the ’320 patent, and argues that a person of ordinary skill in the art at that time would have had “a degree in electrical engineering, physics, materials science, or a similar discipline, along with 3–4 years of experience with the design and fabrication of MOS integrated circuits,” and would have been “aware of and generally knowledgeable about the structure and operation of DRAM” and “DRAM sense amplifiers, including their structure, operation, and physical layout.” Pet. 6, 39 (citing Ex. 1003 ¶¶ 34–37). Patent Owner “does not challenge” Petitioner’s proposed level of ordinary skill in the art. PO Resp. 13; see Ex. 2025 ¶ 31. Based on the full record developed during trial, including our review of the ’320 patent and the types of problems and solutions described in the ’320 patent and cited in the art and apply it for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner does not dispute that Hidaka and Takemura teach the above limitations of claim 1 or that a person of ordinary skill in the art would have been motivated to combine the references’ teachings in the manner asserted by Petitioner and would have had a reasonable expectation of success in doing so; therefore, any such arguments are waived. See Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017); NuVasive, 842 F.3d at 1380–81; Paper 11, 8 (“Patent Owner is cautioned that any arguments for patentability not raised in the response may be deemed waived.”). Petitioner’s analysis for each of the limitations, supported by the testimony of Dr. Bravman, which we credit, is persuasive. See Pet. 40, 42–53, 56–58; Ex. 1003 ¶¶ 178–181, 195–244, 263–278, 288–293.” slip op. at 22

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

    “Patent Owner in its Response argues that no express interpretation of any claim term is necessary. PO Resp. 14. Petitioner in its Reply makes various arguments regarding Patent Owner’s infringement contentions in the district court case, which we address below in Section II.D.4.b.(1), but does not propose a specific interpretation for any language in the claims. See Reply 4–7. Based on the full record developed during trial, we conclude that no terms require express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citations omitted)).” slip op. at 11

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

    “references in the record, and disagree with Patent Owner’s unsupported contention that Luk’s benefits are only realized by using a “bulk” substrate. See Ex. 1003 ¶¶ 248–255; Ex. 1031 ¶¶ 11–27; PO Resp. 38 (citing Ex. 2025 ¶ 140). For example, Luk expressly discloses the benefits of a reduced communication bottleneck between the memory and processor, elimination of “heavy capacitive loads,” lower power dissipation, higher speed operation, improved performance, and increased ability to modify and customize a desired layout. See, e.g., Ex. 1005, col. 1, ll. 16–37, col. 2, ll. 1–30 (disclosing that “logic processor(s) and DRAM memory [] integrated onto a single chip” is what “solves the processor/memory performance gap and bandwidth problems” of the prior art), col. 3, ll. 6–32 (disclosing that “integrating the processor and DRAM on the same chip” reduces power dissipation and improves performance); Ex. 1003 ¶ 252 (citing Ex. 1005, col. 2, ll. 18–30, col. 4, ll. 4–18). Luk never indicates that such benefits apply only when the DRAM and CMOS logic are implemented on a “bulk” substrate. Dr. Giapis also acknowledges that Luk’s stated benefits of DRAM-CMOS logic integration apply regardless of the type of substrate used. Ex. 1028, 112:21–117:3.” slip op. at 30

  Patent outcomesUS 6,747,320 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,747,320
• Micron Technology, Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 1, 2021 · IPR2020-01007 · APJ David C Mckone · IPR · Final written decision

  Claims 1–17 are unpatentable under § 103 over Kishii and Ryan; claims 13–14 are also unpatentable over Liang and El-Kareh.

  RulingsFinal written decision

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

    “In sum, the plain meaning of “memory storage portion” is consistent with Petitioner’s proposed construction (“the region where at least the components that are used for the storage of information are located,” Paper 11, 1 n.1). The Specification’s disclosure also is consistent with construing “memory storage portion” as a portion of a semiconductor device that stores information, as it repeatedly describes a capacitor (and not access circuitry) as storing information. Nothing in the Specification suggests that a “memory storage portion” must include circuitry beyond that for storing information, such as access circuitry. Although we have considered expert testimony from both parties, Dr. Kuhn’s testimony does not persuade us that access circuitry should be included in the construction and, in any case, that testimony is not persuasive enough to reach a construction inconsistent with the intrinsic evidence. See Phillips, 415 F.3d at 1318 (“[A] court should discount any expert testimony ‘that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent.’” (quoting Key Pharms. v. Hercon Lab. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998))). Accordingly, we maintain the construction from our Institution Decision and conclude that “‘memory storage portion’ refers to components that are used to store information, and need not include access circuitry.” Dec. 26.10” slip op. at 23

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “plus-function limitation under 35 U.S.C. § 112 ¶ 6.11 Pet. 18; PO Resp. 70– 71. “Section 112, ¶ 6 recites a mandatory procedure for interpreting the meaning of a means- or step-plus-function claim element. These claim limitations ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999) (quoting 35 U.S.C. § 112 ¶ 6); see also In re Donaldson Co., 16 F.3d 1189, 1193–94 (Fed. Cir. 1994) (en banc) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., 10 Patent Owner argues that the District Court in the Texas case adopted the construction of “memory storage portion” that Patent Owner proposes here, and that we should adopt that construction to promote consistency and reduce the potential for inconsistent results. PO Resp. 31; Sur-reply 27; Ex. 2023 (claim construction order), 2; Ex. 2026 (Markman hearing transcript), 73:14–79:23. We considered this argument in our Order denying Patent Owner’s Rehearing Request, noting that “the Texas court has not yet provided any opinion, reasoning, or explanation supporting th[at] construction[],” and that “we do not know the reasons why the Texas court construed the term[] in the manner it did, or what intrinsic or extrinsic evidence it found supported the construction[].” Paper 19, 10 n.4. We are not aware of any other explanation or reasoning provided by the Texas court subsequent to our Order. Thus, while we have considered the Texas court’s construction, we are still persuaded that Petitioner’s proposed construction is correct. 11 The AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Because the ’041 patent has an effective filing date before the effective date of the relevant provision of the AIA, we cite to pre-AIA § 112 ¶ 6. whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). We construe such a limitation by determining what the claimed function is and identifying the structure or materials disclosed in the specification that correspond to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000).” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Bravman, contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in physics, electrical engineering, materials science, or chemical engineering (or equivalent education in a related field), and at least two years of experience with integrated circuit processing, manufacturing, and structures.” Pet. 28–29 (citing Ex. 1003 ¶¶ 34–36). According to Petitioner and Dr. Bravman, a skilled artisan “would be aware of and generally knowledgeable about the structure and operation of DRAM, including the various layers of material used.” Id. at 29. Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt Petitioner’s proposed level of skill.” slip op. at 29

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “also ‘needed’ for writing and reading information in a cell,” pointing to features such as write driver circuits, input/output circuits, and circuitry for opening rows. Reply 9–11 (citing Ex. 1029 ¶¶ 19–22; Ex. 2003 (“Baker”), 30–318). According to Petitioner, Patent Owner “arbitrarily defines ‘memory storage portion’ to include only some, but not all, of the ‘needed’ circuitry.” Id. at 10. We agree with Petitioner. There is no dispute that a complex electronic device such as a DRAM memory would not operate with a capacitor alone; other circuitry is needed to make it work. An access transistor is an example of such circuitry in a typical DRAM. We credit Dr. Bravman’s testimony that additional circuitry beyond an access transistor would be needed as well. Ex. 1029 ¶¶ 19–22.” slip op. at 20

  Patent outcomesUS 6,424,041 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,424,041
• Snap Inc. v. Palo Alto Research Center Inc.Instituted
  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 · Graham
  Patents in suitUS 8,489,599
• Snap Inc. v. Palo Alto Research Center Inc.Instituted
  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 · Graham
  Patents in suitUS 9,208,439
• Shenzhen Carku Technology Co., Ltd. v. The Noco CompanySome claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00944 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–10 and 12–23 are unpatentable over the listed grounds; claim 11 was not shown unpatentable because the evidence did not establish the claimed connection sequence.

  RulingsFinal written decision

  • Expert testimonyOther

    “Q. So Richardson contemplates a flow of control where the shunt calibration flag was not set, correct? A. That is reasonable. He shows an option -- an option of a “no” result from Step 406. Ex. 1047, 110:14–18. Dr. Wood also agrees that when the shunt calibration flag is not set and the procedure advances to Step 420, the contact relay in Richardson is still open: Q. Now, if the shunt calibration flag is not set and we go to Step 420, the starter contact relay in Richardson is still open, correct? A. That is my understanding. Id. at 77:10–13. Dr. Wood further agrees that when the shunt calibration flag is not set and the procedure advances to Step 214, where reverse polarity connection is tested, the starter contact relay is still open: Q. Okay. Then if we continue to Step 214 in this example, where the shunt calibration flag was not set, when we’re testing for the condition reverse jumper cable voltage, the starter contact relay is still open, right? A. That appears to be the case.” slip op. at 65

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

    “Referring to FIG. 3, Klang states: “[t[he reverse polarity sensor 48, connected in a like manner across the battery terminals 20, 22, senses negative voltage indicating that the battery leads are connected backwards.” Ex. 1007, 6:20–23. Klang’s reverse polarity sensor provides an output signal (sensed negative voltage) indicating whether the battery has a proper polarity connection. Klang states: “[i]f the start button has not been pressed, at step 144, the OCV [battery open circuit voltage] is compared to a low negative voltage to determine whether the conducting cables 18 are properly connected to the battery 16. If the OCV is less than -0.5V, the method proceeds at step 146 to notify the operator that the leads are reversed.” Ex. 1007, 8:55– 60.” slip op. at 26

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

    “references. Accordingly, consideration and discussion of the objective evidence of nonobviousness is unnecessary.” slip op. at 92

  • ExcludeMotion to exclude, deniedDenied

    “discussed below, the Motion is denied.” slip op. at 94

  Patent outcomesUS 9,007,015 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,007,015

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.