- Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00978 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Cherwell did not show a reasonable likelihood that claims 1–20 were unpatentable over Leung under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- BurdenDenied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art at the time of the ’652 patent would have had “a bachelor’s degree in computer science or computer engineering, or in a related field, and approximately two or three years of experience in industry with respect to software design and computer systems.” Pet. 10 (citing Ex. 1004 ¶ 33). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’652 patent and the types of problems and solutions described in the ’652 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Nonecites KSR · GrahamPatents in suitUS 8,832,652 - Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00982 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Hudis, alone or in combinations, taught the required uniquely named hierarchical namespace.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The parties agree that a “hierarchical namespace” is an arrangement of objects and that the objects are arranged hierarchically. They also agree that the “uniquely addressable” aspect should be included in the construction, but they differ on the specificity with which this concept should be described. We agree with Patent Owner that the construction must include the specification’s express definition of “uniquely addressable.” See Ex. 1001, 1:52–60 (“The term ‘namespace’ generally refers to a set of names in which all names are unique. . . . ‘Uniquely addressable’ refers to the property that items in a namespace have unique names such that any item in the namespace has a name different from the names of all other items in the namespace.”).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are persuaded by Patent Owner’s arguments. Petitioner relies on Hudis’s keys for teaching unique naming (see Pet. 18), but Hudis expressly states that a namespace may have two instances with the same key. See Ex. 1005, 9:33–37. This does not comport with our construction of “hierarchical namespace” insofar as one object in the set (i.e., one instance) would not have a different name from all other objects in the set (i.e., the other instance with the same key). See supra § I.G.1. Patent Owner also establishes that certain superclass objects in Hudis may not even have keys, which Patent Owner likens to names. See Ex. 1005, 9:9–12. Without names, such objects cannot meet the unique naming requirements in our construction of “hierarchical namespace.” See supra § I.G.1. In addition, the same teaching cited by Patent Owner states that class objects can inherit keys from a superclass object, which undermines Petitioner’s assertion that a key is unique to an object. See Ex. 1005, 9:9–12. Petitioner has not explained why or how an ordinarily skilled artisan considering Hudis’s use of keys would have understood Hudis as teaching the unique naming of a “hierarchical namespace” consistent with our construction of that term.2” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also have considered Dr. Fox’s testimony on Hudis’s teaching that “matching keys are considered to be the same instance within a namespace.” See Ex. 1003 ¶ 135 (quoting Ex. 1005, 9:33–37) (emphasis omitted). Dr. Fox testifies that this teaching resolves the problem of matching keys because “only a single instance object may have a given name (identified by the property designated as a ‘key value’) within a particular namespace.” Id. Yet merely considering two objects to be the same does not demonstrate that the two objects have different names. We do not credit Dr. Fox’s testimony in this regard because it is contradicted by Hudis. Dr. Fox also cites an example from Hudis related to “root/default” (id. (citing Ex. 1005, 8:60–64, 9:22–30)), but the example does not address the existence of two objects having the same name in Hudis. The fact that certain objects in Dr. Fox’s “root/default” example may have unique names does not indicate that all objects in the set have different names from one another, as required by our construction. See supra § I.G.1.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,895,586
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.