- Arista Networks, Inc. v. Corrigent CorporationSome claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00515 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103; claims 11 and 23 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“For reasons explained in the Petition and Petitioner’s Reply, we agree with Petitioner that the Baker–Wright–Holender ’699 combination teaches summing the two bandwidths determined in “allocating” steps 12.5 and 12.7 to determine a total allocation for each of the physical links—motivated by the known need to ensure that bandwidths do not exceed the available physical link capacity. We disagree with Patent Owner that Holender ’699’s discussion of summing is merely describing a physical constraint. Holender ’699 teaches normalizing the logical link capacities, which requires summing the logical link capacities. See Ex. 1007, 8:38–51. We credit Dr. Houh’s testimony that this “confirms that [Holender ’699’s] teachings about summing are not simply ‘explaining a physical constraint,’ but actually performed.” Ex. 1036 ¶ 61. Holender ’699 refers to capacities 𝐶𝐶𝑗𝑗 as “logical link capacities for each logical link j over all logical networks. Ex. 1007, 6:52–55. But when mapped to physical links, Holender ’699 denotes capacities 𝐶𝐶𝑘𝑘𝑘𝑘 as “capacities of the logical links [𝑙𝑙] that need capacity on the k:th physical link.” Ex. 1007, 8:38–43. In other words, they are the capacities, or bandwidths, allocated to each physical link 𝑘𝑘 for implementing associated logical link 𝑙𝑙. See also id. at 6:60–67 (describing a matrix designed to indicate “if logical link j needs capacity on the k:th physical link.”).” slip op. at 50
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“necessary because the construction does not resolve any contested issues. Pet. Reply 8–10 (citing Ex. 1005 ¶¶ 16, 62; Ex. 1006 ¶¶ 5, 24; Ex. 1003 ¶ 96; Ex. 1036 ¶¶ 49–50). But if a construction is necessary, Petitioner argues that the we should construe in response to as “using,” consistent with how the claimed invention is described in the ’431 patent. Id. at 10–11 (citing Ex. 1001, 2:52–6:10, 8:52–9:2; Ex. 1036 ¶¶ 7–11). Petitioner disagrees that the term means “based on” because limitation 1.3 uses the phrase based on, suggesting that the applicant made a conscious decision to use different language in limitation 1.5. Id. at 11 (citing Ex. 1036 ¶ 11). Patent Owner responds that its two proposed constructions are synonymous, and argues that Petitioner agrees that in response to encompasses “using” or “using information from.” PO Sur-reply 8 (citing Ex. 1001, 2:22–26). Patent Owner contends that its proposed construction resolves a controversy because in Patent Owner’s view, the Baker–Wright combination does not use information from the recited mapping to allocate bandwidth. Id. at 9–12 (citing Ex. 1006 ¶¶ 5, 17, 24; Ex. 2009, 52–56; Ex. 2008 ¶¶ 62–76). Similarly, Patent Owner contends that Holender ’699 does not teach mapping. Id. at 12–13 (citing Ex. 1007, 3:15–17; Ex. 2008 ¶¶ 89–92). We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is in controversy. Thus, we need not construe the term for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s arguments persuasive that Baker teaches allocating bandwidth as part of its resources and that, in light of Wright and Holender ’699, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. Holender ’669 provides further supporting disclosure. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 33; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 9–12 (citing Ex. 1003 ¶¶ 42–46, 48; Ex. 1021 ¶¶ 100–101). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 11–12 (citing Ex. 1003 ¶ 47; Ex. 1021 ¶¶ 102–104).” slip op. at 34
Patent outcomesUS 7,330,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - Qualcomm Incorporated v. Fedex Corporate Services, Inc.Some claims unpatentablePTAB · Oct 6, 2023 · IPR2022-00586 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–15 and 26–30 are unpatentable as obvious over Lau and Benson; claim 28 also relies on Harring. Qualcomm did not show claims 16–25 unpatentable.
RulingsFinal written decision- Exclude
“We do not rely on Exhibits 1010, 1014, 1026, or 1027 for any determinations or findings in this decision. See infra note 10 (noting the context in which Ex. 1014 has been cited). When we use the phrase “evidence of record” or other similar terms or phrases, we are referring to the evidence of record except that evidence that is the subject of FedEx’s Motion to Exclude, that is, Exhibits 1010, 1014, 1026, 1027, and 2049. Accordingly, Patent Owner’s Motion to Exclude as to Exhibits 1010, 1014, 1026, and 1027 is dismissed as moot.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Almeroth essentially agrees with Qualcomm’s articulation of the level of ordinary skill as expressed above. See Ex. 2200 ¶¶ 45–46. Because Qualcomm’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’231 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:16–2:37 (“Field of the Disclosure” and “Background” sections of the ’231 patent, describing background knowledge about methods for tracking packages using wireless sensor devices). Qualcomm also contends that an ordinarily skilled artisan “would have been familiar with the field of technology described [on pages 7–13 of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 7. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Almeroth agrees. Ex. 2200 ¶ 46. the Petition].” Id. (citing Ex. 1002 ¶ 41). The “Field of Technology” section of the Petition refers to background knowledge of RFID technology and hierarchical sensor networks. See Pet. 7–13. Because whether this subject matter is part of the background knowledge in the art is not determinative of our decision, we need not adopt this part of Qualcomm’s articulation of the level of ordinary skill.” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point. Regarding FedEx’s term-differentiation argument, we agree with Qualcomm that, based on the above evidence in the ’231 patent disclosure, there does not appear to be any meaningful difference between “unable to” and “not operative to” as those terms appear in the claims. Thus, we disagree with FedEx’s proposed construction of “unable to directly communicate with the server.” Our prior-art analysis below will be informed by the discussion above, but we need not explicitly construe this term to resolve the issues raised in the Petition. 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 12
Patent outcomesUS 9,182,231 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,182,231 - Petitioner v. Unification Technologies LLCSome claims unpatentablePTAB · Jul 8, 2022 · IPR2021-00344 · APJ Justin T Arbes · IPR · Final written decision
Claims 1–5 and 8–12 are unpatentable as obvious over Suda, and claims 22–26 are not shown unpatentable because their scope cannot be determined with reasonable certainty.
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
- Prior constructionPrior construction adoptedDecided for petitioner
“Construction Order construing various terms of the ’658 patent: Claim Term Construction An identifier that can be associated with a physical address on a storage “logical identifier” device for identifying data stored at the physical address “logical identifier [that/in Indefinite the index] is empty” “data associated with the Not indefinite; plain and ordinary logical identifier [has meaning been/is] erased” Not indefinite; not subject to §112(f); “marking module” plain and ordinary meaning Not indefinite; not subject to §112(f); “storage module” plain and ordinary meaning “instructions configured to . . . recording persistent Not indefinite; not subject to §112(f); data . . . in response the plain and ordinary meaning indication” Ex. 2006, 2–3. We address three claim interpretation issues. First, in the Decision on Institution, based on the record at the time, we agreed with and adopted the district court’s construction of “logical identifier.” Dec. on Inst. 11–12. The parties agree with that construction. See PO Resp. 19; Reply 3. Based on the full trial record, we interpret “logical identifier” in the same manner as the district court.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“No other claim terms require interpretation to decide the issues presented during trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean 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.’” (citation omitted)).” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Third, with respect to the “module” and “instructions” terms listed above, neither party argues that the terms are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph, and the district court construed them not to be means-plus-function limitations. See PO Resp. 18–19; Reply 3–4; Ex. 2006, 2–3. We presume that the terms are not means-plus-function limitations because they do not use the word “means” and find no basis on the record before us to conclude otherwise. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“Because invoking § 112 ¶ 6 is typically a choice left to the claim drafter, we presume at the first step of the analysis that a claim limitation is subject to § 112 ¶ 6 when the claim language includes the term ‘means.’ . . . The inverse is also true—we presume that a claim limitation is not drafted in means-plus-function format in the absence of the term ‘means.’ . . . [T]his presumption is rebuttable [and] can be overcome if a challenger demonstrates that the claim term ‘fails to recite sufficiently definite structure.’”) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015)). No other claim terms require interpretation to decide the issues” slip op. at 12
Patent outcomesUS 8,762,658 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,762,658
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.