- Zscaler, Inc. v. Symantec CorporationAll claims unpatentablePTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12
- BurdenFwd all claims unpatentableUnpatentable
“For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7
Patent outcomesUS 9,525,696 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,525,696 - Google LLC v. Uniloc 2017 LLCRehearing deniedPTAB · Jun 24, 2019 · IPR2017-01685 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Uniloc’s rehearing request, leaving unchanged its determination that claims 1–4, 6–8, 18, 21, and 22 are unpatentable because claim 1 lacks the urged negative limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“While the claim language does contain a recitation of a “single request” by the user to generate a conference call request, we fail to discern any explicit claim language that precludes the user’s determination as to availability or the selection of call participants as part of or as a prelude to that recited “single request.” In other words, the language of claim 1 does not contain the negative limitation proposed by Patent Owner.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“2 As we indicated in the Decision, Patent Owner’s argument appears to be internally inconsistent because, “if Patent Owner’s proposed negative limitation is set forth explicitly in the claim language, as Patent Owner suggests, there would be no need for Patent Owner to argue that there is a reduction in scope due to a disclaimer.” Dec. 11 (citing Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (“[W]hen the patentee unequivocally and unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim [relative to the full ordinary and customary meaning] consistent with the scope of the claim surrendered.”)). the prosecution history’s alleged support for the proposed negative limitation. See Dec. 15–20.” slip op. at 5
Claim constructionPatents in suitUS 7,804,948 - Juniper Networks, Inc. v. Parity Networks, LLCRehearing deniedPTAB · Jun 17, 2019 · IPR2018-01643 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Juniper’s rehearing request, leaving institution denied because the Petition did not explain how Schwartz taught the claimed virtual output queues.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Section 37 C.F.R. § 42.71(d) states the following: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther
“The Petition did not explain how the background section of Schwartz teaches “virtual output queues” as claimed. Nor did the Petition explain how the teachings of the background section of Schwartz would have been modified to teach “establishing at each input port, a number of virtual output queues equal to the number of output ports” as claimed, especially in light of Schwartz’s discouragement of quadratically increasing the number of queues as the number of input/output ports increases. See Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (“A reference may be said to teach away when a person of ordinary skill, upon [examining] 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.”). To the contrary, the Petition relied on Schwartz’s disclosure that the invention “avoid[s] the quadradic increase in packet queues, relative to increasing numbers of input/output ports” and “provides for the linear increase in packet queues, relative to increasing numbers of input/output ports.” See Pet. 29 (quoting Ex. 1004, 3:2–13). The Petition did not explain how providing a linear increase in packet queues relative to increasing numbers of input/output ports teaches “establishing at each input port, a number of virtual output queues equal to the number of output ports.”” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,831,891 - Google LLC v. Uniloc 2017 LLCRehearing deniedPTAB · May 8, 2019 · IPR2017-01683 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Uniloc 2017 LLC’s rehearing request, leaving claims 1–16 unpatentable because it found no overlooked disclaimer, registration evidence, or reply-scope error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Section 37 C.F.R. § 42.71(d) states the following: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Strike new argumentNew argument consideredDecided for petitioner
“Patent Owner contends Petitioner’s argument that the VTE server is not a conference call server is untimely, because Petitioner raised this argument in the Reply. Req. 10. We disagree. Petitioner’s Reply responds to Patent Owner’s argument that the VTE server is a conference call server. See PO Resp. 30–32. Patent Owner “is the party that first raised this issue,” and Petitioner “simply countered, as it was entitled to do.” Idemitsu Kosan Co., LTD. v. SFC Co. LTD., 870 F.3d 1376, 1381 (Fed. Cir. 2017). Patent Owner has not persuasively explained why Petitioner’s Reply to Patent Owner’s argument was beyond the scope of a proper reply.” slip op. at 4
NonePatents in suitUS 8,571,194
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.