- PTAB · May 5, 2022 · IPR2022-00063 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–34 and all asserted grounds after finding a reasonable likelihood that Samsung would prevail on obviousness over Ellsberry and Jeddeloh.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“another patent asserted in the Related Case was filed within a week of the Preliminary Response. Id. We decline to attempt to predict how the District Court would proceed should a stay be requested by either of the parties. Accordingly, we find that this factor neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner admits that “[t]he district of Delaware has not yet set a trial date.” Id. Accordingly, this factor weighs against exercising our discretion to deny inter partes review.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Averbuj was not presented in combination with the other references asserted here and is only used in two of the four grounds, the combination of references asserted in the Petition do not qualify as art that was “previously presented” to the Office. Thus, we find that the combination of references asserted in the Petition, were not previously presented to the Office. Additionally, Patent Owner does not assert or explain sufficiently that Ellsberry, Jeddeloh, and/or Lee are cumulative of any reference cited during prosecution of the ’523 patent. Prelim. Resp. 41–43. On this record, we are not persuaded that Ellsberry, Jeddeloh, and Lee are cumulative of any reference cited during prosecution of the ’523 patent. Accordingly, the first condition of the first part of the Advanced Bionics framework is not satisfied, and we need not consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Conclusion After evaluating the Becton, Dickinson factors within the Advanced” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 6. Patent Owner does not dispute Petitioner’s characterization or offer its own. Accordingly, for purposes of this decision, we adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’523 patent written description and the asserted prior art. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers constructions of several terms which are not disputed by Patent Owner. Pet. 13–15. Nevertheless, we determine that it is not necessary to provide an express interpretation of any of the terms of the claims at this juncture. 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 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,217,523 - PTAB · Feb 16, 2022 · IPR2021-01150 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–18 under § 103 over Paxton, Sutton, and Ivershen, finding a reasonable likelihood of success on at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We concur with Petitioner’s assertions regarding the status of the underlying, related litigation. With respect to Fintiv factor (1), we determine this factor to be neutral. Although the parties stipulated to a trial date, the district court has yet to enter that schedule or hold a scheduling conference. The district court has continued the scheduling conference until after it decides the pending motion to stay. See Ex. 1031, Ex. 1032, 4:11–22. On this record, we are not persuaded that the district court will adhere to the previously agreed upon August 2022 trial date. Even with the arguments and evidence presented, we determine it to be speculative as to whether a stay may be granted if a proceeding is instituted. We reach the same conclusion with respect to Fintiv factor (2), given the speculative nature of the “trial date.” With respect to Fintiv factor (3), we determine that this weighs against discretionary denial; although some discovery has occurred, the parties have not invested significant resources in the district court proceeding.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Ivershen was submitted and discussed during the prosecution of the ’903 patent and in IPR2018-01654 and IPR2018-01655, Ivershen qualifies as art that was “previously presented” to the Office. Thus, we find that Ivershen, the same prior art asserted in the Petition, previously was presented to the Office. Nevertheless, Petitioner asserts that the other prior art references in” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Noting that relevant experience and education can substitute for each other, Petitioner states that a person of ordinary skill in the relevant art, at the time the ’903 patent was filed, had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 13 (citing Ex. 1003 [Declaration of Dr. Robert Akl] ¶¶ 18–20). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “no terms require construction.” Pet. 13. Patent Owner asserts “no express construction of any term is required to resolve any controversy in this proceeding.” Prelim. Resp. 12. After review of the current record, we conclude that no express claim construction is necessary to determine whether to institute review of the challenged claims. 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 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,530,903 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00205 · APJ Bryan F Moore · IPR · Rehearing
The Board granted Google's rehearing request and instituted IPR on claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 on all petitioned grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6–7. Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 18. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“E. Obviousness Analysis We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of the limitations of claim 1 and of claim 5 (which includes the limitations of claim 1) and, on that basis, institute inter partes review of all the Challenged Claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims.”). Although dependent claim 5 is the first Challenged Claim in the Petition, we begin our analysis thereof by analyzing its underlying base claim, namely, independent claim 1.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00204 · APJ Bryan F Moore · IPR · Rehearing
The Board granted rehearing and instituted IPR on claims 1–4, 8, 17–20, 24, 33–36, and 38 on all petition grounds, finding a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“as our basis for exercising our discretion to deny institution are no longer in the Western District of Texas. Ex. 1023, 16; Ex. 3003. In the Request for Rehearing, Petitioner argues that (at that time), “[b]ecause the Federal Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not 3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“B. Multiple Petitions In its Preliminary Response, Patent Owner also argues “[t]he Board should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 17. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two petitions therefore differ materially both in substance and in the defenses Patent Owner may potentially raise, and were needed to comply with the word limits.” Paper 3, 3. Patent Owner argues this reason is moot because Patent Owner “has opted to not raise a priority dispute at the pre-institution stage.” Prelim Resp. 18–20. We determine that Patent Owner may raise a priority challenge post-institution so Petitioner’s reason for two petitions is still valid. Thus, we determine that denial of one of the two petitions is not appropriate in this case.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are also guided by the principle that we need only construe claim terms if, and to the extent that, it is necessary for the purpose of the proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The Petition states, “[n]o claim terms need to be construed by the Board at this time.” Pet. 6. Patent Owner “does not propose any claim constructions.” Prelim. Resp. 21. Petitioner does present an implied construction of “location information” which we discuss below, in Section III.E.1.d., in association with Petitioner’s contentions regarding that claim term. Nevertheless, in this Decision, we give the claim terms their ordinary and customary meanings.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01153 · APJ Bryan F Moore · IPR · Institution
Institution denied because Petitioner did not show a reasonable likelihood of establishing claims 1–20 unpatentable as obvious over Jungck, alone or with RFC2003.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that Jungck meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that Jungck meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 22
- BurdenDecided for patent owner
“Whether or not this was known as a general proposition does not address reasons why Jungck’s traffic appears to bypass the edge servers upon which Petitioner relies and why a person of ordinary skill would have modified Jungck’s operation to apply its rules to all traffic or why a person of ordinary skill would have modified Jungck’s operation to use device 900 instead of the edge servers and what effect that would have on the rest of the operation of Jungck. Petitioner also appears to rely on its declarant who testifies it was well-known to block all incoming traffic. Fintiv Reply 9 (citing Ex. 1004 [Declaration of Dr. Vijay Madisetti] ¶¶ 72–73). Nevertheless, this section of the Declaration was not cited in the Petition but rather is referred to indirectly in a portion of the Declaration which is cited in the Petition. Pet. 44 (citing Ex. 1004 ¶ 241). Paragraph 211 of the Declaration states “[a]s also discussed in Section IV, the use of block lists (e.g., blacklists) to perform packet filtering, including both ingress and egress filtering, was well-known,” but does not refer to paragraphs 72 and 73. Ex. 1004 ¶ 211 (emphasis added). As the Court of Appeals for the Seventh Circuit has explained, “[a] brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999); see also United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). Additionally, paragraph 72 of the Declaration contains new argument regarding “firewall” and “standard networking practice” based on references (Bharali and Wood) not cited for that proposition in the Petition. Ex. 1004 ¶ 72. We find the Petition improperly incorporates this section of the Declaration by reference because the basis of the “firewall” argument is not explained sufficiently in the Petition. Cisco Systems, Inc., v. C-Cation Technologies, LLC, IPR2014-00454, Paper 12 at 8 (PTAB Aug. 29, 2014) (informative opinion) (describing the proper course of action as “to not consider arguments that are not made in the Petition, but are instead incorporated by reference”).” slip op. at 16
- Skill levelSkill level petitioner adoptedOther
“other, Petitioner states that a person of ordinary skill in the relevant art on October 22, 2012 (the filing date of the application that matured in the ’437 patent), would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attack. Pet. 16–17 (citing Ex. 1004 [Declaration of Dr. Vijay Madisetti] ¶¶ 34–36). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 6
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,567,437 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00862 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, 5, 9–14, 17, 21, and 22 are unpatentable under §103 over the Golan-based combinations; the Board found the combinations taught the limitations and secondary considerations lacked nexus.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’332 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp. 12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims in its Preliminary Response. Prelim. Resp. 7–8. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived and we do not explicitly We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., 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 10
- BurdenUnpatentable
“We have reviewed Petitioner’s arguments, the supporting testimony provided by Dr. Durand, the cited portions of Golan, Martin, and Togo and the other cited evidence and we are persuaded that the proposed combination teaches the limitations recited in independent claim 1 as set forth above. Petitioner’s rationales for combining Golan and Martin and Golan, Martin, and Togo are set forth earlier in this Section, and is determined to be supported by sufficient rational underpinning for at least the reasons set forth above. Patent Owner’s contentions regarding secondary considerations of non-obviousness are set forth above and, as discussed, do not weigh in favor of non-obviousness because Patent Owner has not established a nexus between the claimed invention and the cited evidence. For the foregoing reasons, we conclude Petitioner establishes unpatentability of independent claim 1 over Golan and Martin by a preponderance of the evidence. Accordingly, we are persuaded that Petitioner demonstrates the unpatentability of claim 1 over the combination of Golan, Martin, and Togo by a preponderance of the evidence.” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments, which are premised on a “physical” or “bodily” incorporation of limitations of one reference into the other. This is not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Rather than express obviousness as the physical incorporation of a structure from one reference into the structure of another reference, the prior art should be viewed as a combination of teachings from different sources, and the use of those teachings by one of ordinary skill in the art. See KSR Int’l Co., 550 U.S. at 418(the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art). Petitioner contends “Togo’s image-quality-based no-switching criterion teachings apply to the combination regardless of whether a distance between cameras is close or whether optical axes are parallel.” Pet. Reply 10 (citing Ex. 1040 ¶ 52). Petitioner seeks only “to incorporate Togo’s teachings of a no-switching criterion based on a specific ‘setting magnification X’ and ‘photography distance Y’ of an object to be imaged.” Pet. 32 (citing Ex. 1005 ¶ 15; Ex. 1010 ¶¶ 2, 37, 49; Ex. 1003 ¶ 68). Thus, Patent Owner’s argument does not undermine Petitioners showing For the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan, Martin, and Togo is supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. We are further persuaded that the cited evidence sufficiently supports Dr. Durand’s testimony.” slip op. at 43
Patent outcomesUS 10,356,332 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,356,332 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00861 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 4, 8–12, 15, 19, and 20 are unpatentable as obvious over the Golan, Martin, and Togo combinations, with Levey, Border, or Parulski added for certain dependent claims.
RulingsFinal written decision- Skill levelOther
“Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result, “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’898 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp.12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims, in its Preliminary Response. Prelim. Resp. 7–9. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived, and we do not We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “A reference may be said to teach 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.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “A reference may be said to teach 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.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34
Patent outcomesUS 10,230,898 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,230,898 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00896 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1–11 over the listed §103 grounds, and claim 12 over Chen, Iwasaki, and Beich.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“testimony, and the accompanying Zemax diagrams and we are persuaded that Petitioner establishes that the combination of Ogino and Chen II teaches the limitation recited in claim 4. Petitioner apparently relies on the same motivation to combine Ogino and Chen II as it does for independent claim 1, which we determined above is supported by sufficient rational underpinning with a reasonable expectation of success. See Pet. 26–36; supra § III.E.3.b. Accordingly, we are persuaded that Petitioner establishes unpatentability of claim 4 over the combination of Ogino and Chen II by a preponderance of the evidence.” slip op. at 30
- Skill levelOther
“B. Level of Ordinary Skill in the Art” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“determine that Petitioner’s contentions and Dr. Sasián’s supporting testimony are sufficiently supported by the cited portions of Iwasaki and that Iwasaki teaches each of the limitations of claim 1 and its preamble. Patent Owner does not dispute Petitioner’s showing. For the foregoing reasons, we are persuaded that Petitioner establishes the unpatentability of claim 1 over Iwasaki by a preponderance of the evidence.” slip op. at 17
Patent outcomesUS 10,317,647 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,317,647 - Bright Data Ltd. v. Metacluster LT, UabInstitution deniedPTAB · Dec 1, 2021 · IPR2021-00983 · APJ Debra K Stephens · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” slip op. at 2
- Skill levelSkill level board ownOther
“Patent Owner does not contest Petitioner’s assertion (see generally Prelim. Resp.). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). in light of Petitioner’s definition of the level of ordinary skill in the art, we determine an ordinarily skilled artisan is: an individual who had (1) a bachelor’s degree or equivalent in the field of Electrical Engineering, Computer Engineering, or Computer Science, or in an equivalent field that includes network engineering as a topic of study (hereinafter, “technical study”), plus at least one year of industry technical experience in the computer network field, such as serving as an engineer for an Internet service provider performing network design, development, or configuration tasks, or as a software developer for network communications software or related utility software, or (2) three years of full-time technical experience in the field of electrical engineering, computer engineering, or computer science or in an equivalent field that includes network engineering or network communications software (hereinafter, “technical fields”), or (3) an equivalent combination of academic study in technical study and work experience in the technical fields.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Proxy Rotator’ as ‘a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting’” (Prelim. Resp. 15 (citing Ex. 1001, 5:4–7)). of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting” (id. at 5:4–7). In accordance with the Specification’s “general terminology description,” we construe the term “Smart Proxy Rotator” as a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“construed as “‘the portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider,’ which may be equal to the weight assigned to that particular proxy provider divided by the sum of weights assigned to all proxy providers during the same time period” (Prelim. Resp. 20 (citing Ex. 2003 ¶ 56)). Patent Owner’s definition requiring a “utilization threshold” to be a “portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider” is too narrow. The ’948 Patent does not expressly define the term “utilization threshold,” and, instead, describes utilization thresholds using an example (id. at 8:1–8). The ’948 Patent states [o]ne of the usage examples can be the following: if one provider has a weight equal to 10, and the other provider has a weight equal to 20, the proxy rotator should use the second provider 66.6% of the time and the first provider 33.3% of the time, when no changes to the default providers’ weights have been introduced. These percentages are the utilization thresholds of each provider. threshold is a goal amount of use, not an actual amount of use. A utilization threshold may represent a desired maximum percentage (i.e., proportion), of proxy requests to be referred to a particular proxy provider. Based on the Specification’s use of a “utilization threshold,” we construe the term to mean “a maximum percentage of use assigned to a particular proxy provider that is equal to a weight for the particular proxy provider divided by the sum of respective weights assigned to all proxy providers during the same time period.”” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,601,948 - Juniper Networks, Inc. v. Correct Transmission, LLCInstitution deniedPTAB · Nov 19, 2021 · IPR2021-00984 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted obviousness grounds taught or suggested the claimed responsive fragmentation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and Reply, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one Challenged Claim of the ’669 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we do not institute an inter partes review of the ’669 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and fewer years of design and development experience. Pet. 5–6 (citing Ex. 1003 ¶¶ 59–63). “Patent Owner takes no position with respect to Petitioner’s proposed level of skill.” Prelim. Resp. 37. We regard Petitioner’s proposed definition as reasonable, and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang. Ex. 1003 ¶¶ 59–63.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 6 (“Petitioner construes each term as having its ordinary and customary meaning.”); Prelim. Resp. 11 (“Patent Owner does not propose any claim term departs from its ordinary and customary meaning.”). We do not find that the express construction of any term is necessary for this decision. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“While not showing a teaching away, the above statement in Sourani contrasting stop points and fragmentation does show that one of ordinary skill in the art reading Sourani would know that the stop points in Sourani are not intended to be fragments. Petitioner has not explained sufficiently why, despite this contrast, one of ordinary skill would use fragmentation with the system of Sourani.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,876,669
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.