• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand

  Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.

  RulingsRemand decision

  • RemandOther

    “Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6

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

    “We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22

  Patent outcomesUS 11,004,271 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,004,271
• Apple Inc. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Jun 3, 2026 · IPR2022-00981 · APJ Jameson Lee · IPR · Remand

  On remand, claims 8–11, 13, 17, and 19 were held unpatentable over Rautiola, Regnier, and Sainton; claim 15 was not shown unpatentable.

  RulingsRemand decision

  • RemandMixed

    “8–11, 13, 15, 17, and 19, and remanded “for consideration of the patentability of those claims.” Id. at 14. We understand both the reversal and vacature are with respect to Ground 1 of alleged unpatentability, not Ground 2, because the Federal Circuit’s decision did not discuss anything relating to Ground 2. Paper 43. The parties agreed. Paper 44. In this remand proceeding, neither party requested the filing of additional briefing or evidence. In a telephone conference call, both parties expressed agreement with the Board (1) that “there is no issue regarding collateral estoppel or issue preclusion with respect to dependent claims 8– 11, 13, 15, 17, and 19, and (2) that the remand proceeding would not involve the Board revisiting any matter or issue concerning alleged obviousness of claims 1, 8, 9, 11, 13, 17, and 19 over Ground 2.4 Papers 43, 44. The parties also agreed that the remand proceeding would only involve the Board reviewing the alleged obviousness of dependent claims 8–11, 13, 15, 17, and 19 as obvious over Rautiola, Regnier, and Sainton. Id. We have authority to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. On the record before us, which is the same as the record before us at the time we issued the first final written decision (Paper 34), we determine that Petitioner has proved by a preponderance of the evidence that claims 8– 11, 13, 17, and 19, but not claim 15, of the ’936 patent are unpatentable over Rautiola, Regnier, and Sainton.” slip op. at 3

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “5. Petitioner’s Request to Discredit Dr. Cooklev’s Declaration Petitioner makes several arguments discrediting Dr. Cooklev’s declaration (Ex. 2031) and asserts that Dr. Cooklev’s declaration should be accorded little to no weight. Reply 13–14. We have already considered and rejected this request in the Final Written Decision issued on November 7, 2023. Paper 34, 21–23. Our reasoning need not be reiterated here. Petitioner does not persuade us that Dr. Cooklev’s declaration testimony should be accorded little to no weight.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petition’s definition of level of ordinary skill. See generally PO Resp. Patent Owner’s expert, Dr. Cooklev, accepts Dr. Kotzin’s proposed level of ordinary skill in the art. Ex. 2031 ¶ 24. We adopt Petitioner’s proposal regarding the level of ordinary skill in the art. This level of ordinary skill in the art is supported by the testimony of Dr. Kotzin (Ex. 1003 ¶¶ 20–22) and is consistent with the level reflected in the ’936 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). A prior art reference constitutes analogous art if it is “from the same field of endeavor” or “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023).” slip op. at 16

  Patent outcomesUS 8,472,936 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,936
• Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.Some claims unpatentable
  PTAB · Jan 23, 2026 · IPR2025-00749 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–4 and 8–13 are unpatentable as obvious over Gallagher and Schofield; claims 5–7 and 14–16 were not shown unpatentable on the asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11

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

    “As a general rule, unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one.” Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation modified). “However, a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Id. (cleaned up). “[O]rdinarily in process claims steps taken concurrently are the equivalent of steps taken successively.” In re White, 39 F.2d 974, 975 (CCPA 1930); see also Cybersettle, 243 F. App’x. at 609 (finding “the step of calculating the differences between demands and offers can occur concurrently with the [next enumerated step of] receipt of multiple demands and offers” and “the testing step of ‘determining whether any of the differences fall within the predetermined settlement range’ may occur concurrently with the receipt and comparison of the bids” (citation modified)). This is especially true here, given that the recitations at issue are functional language in an apparatus (system) claim. We further agree with Petitioner that the ’328 patent discloses such concurrent performance of these steps: Either concurrent with or subsequent to the identification of road signs 30 and generation of asset management database 24, the computer processor 22 evaluates that portion 32 of each video frame or image that depicts a road sign 30 to determine a set of color values 40, 42 for each of a plurality of colors on the road sign 32. A retroreflectivity value is generated for each color portion 34, 36 on each frame of the tagged videostream 20 containing the road sign 30 that represents a different color value 40, 42. slip op. at 13

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

    “Petitioner is correct to the extent that it need not show that “the features of [Schofield] may be bodily incorporated into the structure of [Gallagher],” but Petitioner must prove that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting, 825 F.3d at 1381. For claim 9, Petitioner proposes to modify Gallagher’s system to use “Schofield’s determination of a light source’s location within a field of view” in Gallagher’s system. Pet. 23. Thus, Petitioner’s combination does not require the combination of Gallagher’s and Schofield’s sensors into a single system, and Patent Owner’s “sensor fusion” argument is inapposite. See Tr. 48:8–49:6 (Patent Owner’s counsel confirming that the problem of “sensor fusion” stems from combining disparate sensors in a single system). As noted above, Schofield teaches considering the relative location of the light source in determining whether the light source is from headlights or taillights (that is, an object of interest). See Ex. 1006, 9:26–35. We are persuaded that an ordinarily skilled artisan would be motivated to use this teaching in Gallagher’s device to help distinguish between road markers that are arranged side-by-side and have a reasonable expectation of success in doing so. See Ex. 1005 ¶ 40; Ex. 1003 ¶¶ 77 (“[An ordinarily skilled artisan] would have seen Schofield’s determination of a light source’s location within the field of view as advantageous because it would have allowed Gallagher’s computer to associate the measured reflectance level with the appropriate road marker.”), 79 (“[I]mplementing this determination would have required [an ordinarily skilled artisan] to implement only conventional techniques of image processing (identifying a location of a particular pixel within an array), which was well known by [an ordinarily skilled artisan], to predictably yield the result of the location within a field of view indicating an intensity value associated with a road marker. Given that Schofield and Gallagher disclose similar types of arrays, this combination would have merely required the use of Schofield’s known technique to improve Gallagher’s similar device in the same way.”).” slip op. at 30

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)).” slip op. at 49

  Patent outcomesUS 9,671,328 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,671,328
• Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.Some claims unpatentable
  PTAB · Jan 23, 2026 · IPR2024-01111 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–4 and 8–13 are unpatentable as obvious over Gallagher and Schofield; claims 5–7 and 14–16 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed

    “As a general rule, unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one.” Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation modified). “However, a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Id. (cleaned up). “[O]rdinarily in process claims steps taken concurrently are the equivalent of steps taken successively.” In re White, 39 F.2d 974, 975 (CCPA 1930); see also Cybersettle, 243 F. App’x. at 609 (finding “the step of calculating the differences between demands and offers can occur concurrently with the [next enumerated step of] receipt of multiple demands and offers” and “the testing step of ‘determining whether any of the differences fall within the predetermined settlement range’ may occur concurrently with the receipt and comparison of the bids” (citation modified)). This is especially true here, given that the recitations at issue are functional language in an apparatus (system) claim. We further agree with Petitioner that the ’328 patent discloses such concurrent performance of these steps: Either concurrent with or subsequent to the identification of road signs 30 and generation of asset management database 24, the computer processor 22 evaluates that portion 32 of each video frame or image that depicts a road sign 30 to determine a set of color values 40, 42 for each of a plurality of colors on the road sign 32. A retroreflectivity value is generated for each color portion 34, 36 on each frame of the tagged videostream 20 containing the road sign 30 that represents a different color value 40, 42. Ex. 1001, 5:52–60. Thus, the ’328 patent discloses concurrently detecting objects of interest (road signs) and determining whether the object of interest has a particular color value. slip op. at 13

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

    “Petitioner is correct to the extent that it need not show that “the features of [Schofield] may be bodily incorporated into the structure of [Gallagher],” but Petitioner must prove that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting, 825 F.3d at 1381. For claim 9, Petitioner proposes to modify Gallagher’s system to use “Schofield’s determination of a light source’s location within a field of view” in Gallagher’s system. Pet. 23. Thus, Petitioner’s combination does not require the combination of Gallagher’s and Schofield’s sensors into a single system, and Patent Owner’s “sensor fusion” argument is inapposite. See Tr. 48:8–49:6 (Patent Owner’s counsel confirming that the problem of “sensor fusion” stems from combining disparate sensors in a single system). As noted above, Schofield teaches considering the relative location of the light source in determining whether the light source is from headlights or taillights (that is, an object of interest). See Ex. 1006, 9:26–35. We are persuaded that an ordinarily skilled artisan would be motivated to use this teaching in Gallagher’s device to help distinguish between road markers that are arranged side-by-side and have a reasonable expectation of success in doing so. See Ex. 1005 ¶ 40; Ex. 1003 ¶¶ 77 (“[An ordinarily skilled artisan] would have seen Schofield’s determination of a light source’s location within the field of view as advantageous because it would have allowed Gallagher’s computer to associate the measured reflectance level with the appropriate road marker.”), 79 (“[I]mplementing this determination would have required [an ordinarily skilled artisan] to implement only conventional techniques of image processing (identifying a location of a particular pixel within an array), which was well known by [an ordinarily skilled artisan], to predictably yield the result of the location within a field of view indicating an intensity value associated with a road marker. Given that Schofield and Gallagher disclose similar types of arrays, this combination would have merely required the use of Schofield’s known technique to improve Gallagher’s similar device in the same way.”).” slip op. at 30

  • Expert testimonyPatent owner expert discountedOther

    “The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11

  Patent outcomesUS 9,671,328 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,671,328
• Inductev, Inc. v. Witricity CorporationSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 7–10, 12–16, 18, and 19 are unpatentable over the stated grounds; claims 4–6 were not shown unpatentable because the proposed multi-coil alignment lacked prior-art support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have had . . . a bachelor’s degree in electrical engineering, microelectronics, or equivalent and . . . two to three years of industry or research experience in the field of wireless energy transfer,” and that “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 39–44). Patent Owner does not contest this. See PO Resp. Petitioner’s proposed articulation is supported by testimonial evidence and appears to be consistent with the types of problems and solutions in the ’654 patent. See Ex. 1001, 1:15–28. We adopt it for this decision.” slip op. at 7

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

    “We agree with Petitioner that the evidence does not suggest (and Patent Owner does not explicitly argue) that the terms “transmitting antenna” and “receiving” antenna depart from the ordinary and customary meanings of those terms. Pet. 1–2. However, for the reasons discussed below, the outcome of our decision would be the same whether we adopted Petitioner’s or Patent Owner’s proposed construction. Thus, we need not adopt either party’s proposed construction for this decision. See 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.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “spaced configuration are not confined to ferrite cores 32 and 3, and that at least a component of the flux lines will escape the cores. See Ex. 1032 ¶¶ 48–52; Ex. 1038 ¶ 54 Fig. 2. Indeed, the evidence suggests (and Dr. Horenstein acknowledges in his first declaration) that at least a component of flux will escape the core of even a traditional transformer. See Ex. 1032 ¶¶ 45–47; Ex. 1044, 6; Ex. 2001 ¶ 27. In his second declaration, Dr. Horenstein provides contrary testimony that in Odachi’s open configuration during alignment, cores 32 and 3 “act to confine or guide the magnetic flux lines, rather than radiate them into free space,” and “the flux lines would [not] leave the gap area and enter into the space distal to the magnetic circuit.” Ex. 2010 ¶ 69. But in view of Dr. Horenstein’s contrary position in his first declaration, and the lack of supporting evidence in his second, we do not find it credible. 37 C.F.R. § 42.65(a) (2022) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Apple Inc. v. MPH Techs. Oy, 28 F.4th 254 (Fed. Cir. 2022).” slip op. at 24

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

    “(4) Analysis We are persuaded by Petitioner’s argument that during the alignment process in Odachi corresponding to claim 13, there is a “spaced distance between the primary inductive coupler [230] and the secondary inductive receptacle 2” which is “reduced gradually and electromagnetic induction occurs between the coupler to the receptacle when the former coupler comes close to the latter receptacle.” Ex. 1005, 6:1–6. Thus, prior to any contact or precise alignment between the two cores, “an electromotive force is induced in the secondary coil 4 and this induced force is increased with the decrease in the spaced distance.” Id. at 6:6–8. At least in that spaced configuration, the evidence of record suggests that primary coil 31 produces a near-field component of flux into free space (the air space between the coils where there is no intervening core material) that is intercepted by secondary coil 4 to effect resonant inductive coupling, and that secondary coil 4 intercepts and receives the near-field component of flux in free space that is generated by primary coil 31 to effect resonant inductive coupling. See Ex. 1032 ¶¶ 48–52, 55. Thus, we find that Odachi discloses a “transmitting antenna” (coil 31) and a “receiving antenna” (coil 4) under Patent Owner’s proposed construction. We would reach the same finding under Petitioner’s proposed broader construction because the evidence suggests that Odachi’s coils 31 and 4 would have been considered “antennas” under the parties’ uncontested definition of that term, which is “a device that radiates and/or receives radio waves.” See id. ¶¶ 43–47, 53–54; Ex. 1032 ¶ 15 (Dr. Allen agreeing with this definition of “antenna”); Ex. 2001 ¶ 25 (Dr. Horenstein agreeing with this definition of “antenna”)). In addition, Petitioner persuasively shows that the free space between Odachi’s coils in the spaced configuration includes the “near-field region,” which includes the induction field around primary coil 31. See Ex. 2006, 498; Ex. 1045, 5:4–7; Ex. 1032 ¶¶ 53–54). Dr. Horenstein’s testimony does not contradict this. Although he points out that there are separate terms for inductive, near, and far fields, he also acknowledges that “[t]he region of space closer to the antenna than the far field is the near-field region.” Ex. 2010 ¶ 37 (citing Ex. 2006, 275).8” slip op. at 22

  Patent outcomesUS 8,466,654 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,466,654
• Meta Platforms, Inc. v. Eight KHZ, LLCSome claims unpatentable
  PTAB · Jan 7, 2025 · IPR2023-01003 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 3, 6, 15, 16, and 19 are unpatentable; claims 2, 8–10, 12, 14, 17, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “1. “Call” Terms (Claims 1, 8, and 15) The parties, and their respective experts, agree that “telephone call” (claim 1), “electronic call” (claim 8), and “electronic phone call” (claim 15) should be interpreted to mean “voice communication over an electronic network between at least two parties,” which was Patent Owner’s proposal in the district court case. See Pet. 16, 19 n.8, 58 (citing Ex. 1027, 9);1 Ex. 1003 ¶ 82; Ex. 2011 ¶¶ 51–53; Ex. 2016, 176:10–177:6 (Dr. Kyriakakis agreeing that “there is live voice exchange during a telephone call” (in addition to “background noise”)), 180:22–181:11 (same). Based on our review of the ’090 patent, we agree as well and adopt that interpretation for purposes of this Decision. See, e.g., Ex. 1001, col. 3, l. 1–col. 5, l. 44 (“Consider an example in which a listener sits at his kitchen table and has an electronic telephone call with his mother.”), Fig. 1. 1 When citing non-patent references, we refer to page numbers added by Petitioner in the bottom-right corner of the exhibit. Listening Person” (Claim 1) and “Sound Localization Point . . . Away From and Proximate to the First Person” (Claim 15) a) Procedural History As explained above, the parties did not propose any express interpretations in their Petition and Response. See Pet. 15; PO Resp. 3. Patent Owner argued, however, that “Petitioner and Dr. Kyriakakis misapprehend the scope and meaning of the [c]hallenged [c]laims.” PO Resp. 35–49. For example, Patent Owner argued that they “mischaracterize [c]laim 1’s scope as exclusively directed at binaural recording (but not binaural synthesis),” claim 8 “inherently us[es] binaural synthesis and HRTF processing,” and “binaural synthesis methods must be employed” for claim 15. Id. at 36, 46, 48–49 (emphasis omitted). In its Reply, Petitioner characterized the dispute between the parties as pertaining to the phrase “away from and proximate to,” where Petitioner proposed an interpretation of “a distance from” and Patent Owner allegedly was proposing “externalization of sound through HRTFs and [6 degree of freedom (6DOF)] tracking of the listener relative to the SLP that represents the talker.” Reply 2–12. Patent Owner responded in its Sur-Reply by stating that Petitioner “mischaracterizes” Patent Owner’s arguments, Petitioner “disputes constructions that [Patent Owner] never proposed,” and Petitioner’s focus on certain claim language for which Patent Owner “never proposed construction” was “misplaced.” Sur-Reply 1–2, 11. Patent Owner agreed, though, that the parties’ disagreement was “whether the claims require HRTF processing and whether [the] prior art teaches such processing.” Id. at 5; see Tr. 49:19–21 (Patent Owner agreeing that the dispute is “whether the claims require . . . processing with HRTFs”). dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner relies on its earlier arguments regarding claim 17. Pet. 41; see Ex. 1003 ¶ 184 (citing earlier analysis of Bedingfield). Petitioner further contends that a person of ordinary skill in the art “would have been motivated to apply Ballas’s wearable frame with head tracking and HRTF processing to Bedingfield-Andrea’s headphones” to “provide[] a more realistic virtual experience,” but does not make any argument that Ballas teaches changing an ITD. Pet. 39–43; see Ex. 1003 ¶¶ 175–191. For the reasons explained above, we are not persuaded that Bedingfield teaches changing an ITD. See supra Section II.D.6. Accordingly, Petitioner has not proven, by a preponderance of the evidence, that claim 18 would have been obvious based on Bedingfield, Andrea, and Ballas under 35 U.S.C. § 103.” slip op. at 61

  • Strike new argumentNew argument consideredDenied

    “exceptional remedy of striking sentences in the Sur-Reply. Patent Owner filed the deposition transcripts of Dr. Welch and Dr. Roginska “only for the limited purpose of allowing the Board to understand the context of the cross-examination” and “does not rely on the[] [e]xhibits for any substantive argument in [the] Sur-Reply.” Sur-Reply v–vi. Patent Owner does not cite Exhibits 2029 and 2030 themselves in its Sur-Reply; it only cites Dr. Kyriakakis’s deposition transcript in this proceeding. Id. We agree with Patent Owner that its arguments in the Sur-Reply are properly responsive to the Reply because they address Dr. Kyriakakis’s cross-examination testimony where he was questioned about the opinions in his reply declaration (but we do not agree with Patent Owner’s claim interpretation arguments on the merits, for the reasons explained above). See Mot. to Strike Opp. 3; supra Section II.B.2.e. We also agree, under the particular factual circumstances presented, that filing Exhibits 2029 and 2030 was proper so the Board has the full context in which to evaluate Dr. Kyriakakis’s cross-examination testimony. Petitioner’s Motion to Strike is denied.” slip op. at 79

  Patent outcomesUS 9,226,090 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,226,090
• Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCSome claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01023 · APJ Lynne H Browne · IPR · Final written decision

  Claims 1, 3–9, and 11–14 are unpatentable under §103; claims 2, 10, and 17–20 were not shown unpatentable under either asserted ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “research experience in virtual/augmented reality, including visual and audio modeling and rendering” and that “[a]dditional education can compensate for less experience, and vice-versa.” Pet. 4–5 (citing Ex. 1003 ¶¶ 32–37). “Patent Owner accepts Petitioner’s definition of [a POSITA].” PO Resp. 2. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “Petitioner asserts that “[t]he challenged claims are unpatentable under any reasonable construction, including their plain meaning.” Pet. 5. We understand Petitioner’s position to be that no claim construction is required. See id. Patent Owner contends “that ‘no express constructions of the claims are necessary.’” PO Resp. 2 (citing Dec. 10). We agree with the parties that no claim terms require express construction. See Vivid Techs. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “preponderance of the evidence that the combined teachings of Pedrotti, Jang, and Begault disclose or suggest “highlighting, while the user is located in the zone and with a display of the WED, one of the multiple SLPs in the zone when the PED held in the hand of the user is pointed at one of the multiple SLPs in the zone” as required by claim 1. Even if we assume (without deciding) that Pedrotti’s virtual fence is an SLP, we agree with Patent Owner that Pedrotti’s virtual fence is “at the boundary” of its “safe area” (i.e., zone), not “in the zone” as required by limitation 1[c]. PO Sur-reply 4; Ex. 1005, 11:66–12:15. In other words, the virtual fence “defines the zone itself and thus is not in the zone” as the claim requires. PO Sur-reply 4. Petitioner has not addressed this difference between what is claimed and what is disclosed by Pedrotti or explained why the combined teachings of Pedrotti, Jang, and Begault would have rendered placement of the virtual fence “in the zone” obvious to one of ordinary skill in the art. We further agree with Patent Owner that Petitioner has not adequately demonstrated that it would have been obvious for highlighting to occur in response to the user pointing a PED at the virtual fence (or any other virtual image). Rather, Petitioner repeatedly asserts that a person of ordinary skill in the art would have understood that Pedrotti’s system could have used highlighting when the PED is pointed at one of the SLPs, without pointing to sufficient basis in Pedrotti’s disclosure or explaining why one of ordinary skill in the art would have been motivated to implement highlighting in the manner claimed. Pet. 20–22. Dr. Welch similarly testifies, without sufficient support in Pedrotti, regarding what a person of ordinary skill in the art “could” have done. See, e.g., Ex. 1003 ¶¶ 268–272, 275–276. Such reasoning is inadequate to demonstrate obviousness because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also makes a number of new arguments in its Reply that a person of ordinary skill in the art “would have used Pedrotti’s system to highlight other SLPs, such as Pedrotti’s virtual ‘weapon[s],’” relying in part on “additional references.” Reply 6–10. Petitioner, however, only briefly referenced virtual sword 802 in its Petition and did not advocate the same theories for limitation 1[c] in its Petition. See Pet. 13 (mentioning a “virtual weapon” in connection with limitation 1[a]), 19–20; Tr. 53:17–55:1. Accordingly, these arguments in the Reply are improper new arguments, which we do not consider. See 37 C.F.R. § 42.23(b) (“[a] reply may only respond to arguments raised in the corresponding . . . patent owner response”); Patent Trial and Appeal Board Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“CTPG”) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.”); Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not err in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not err in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 19

  Patent outcomesUS 10,798,509 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,798,509
• Sonos, Inc. v. Google LLCSome claims unpatentable
  PTAB · Nov 1, 2024 · IPR2023-00806 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 5, 9–12, and 15–18 are unpatentable as obvious over either Roberts and Asokan or Suumäki; claims 6–8 and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Schmidt’s testimony, has proposed that a person of ordinary skill in the art at the time of the invention “would have had a degree in computer engineering, computer science, or a similar discipline, along with 2 years of professional experience in the fields of networking and network-based systems or applications, or an equivalent level of skill, knowledge, and experience,” and would have been “aware of and generally knowledgeable about how devices were provisioned onto wireless networks, along with standards applicable to well-known methods for communication such as Wi-Fi, Bluetooth, and NFC available at the time the ’615 patent was filed.” Pet. 18 (citing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp.; PO Sur-reply. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 8

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

    “In the Institution Decision, we considered the assertions of Petitioner that the terms of the ’615 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning. Dec. to Inst. 7 (citing Pet. 14; Ex. 1003 ¶¶ 79–82). Patent Owner also does not assert any express constructions. See generally PO Resp.; PO Sur-reply. Given the lack of controversy, we need not explicitly adopt or discuss any explicit constructions in this decision. 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 9

  • BurdenMixed

    “that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree with Patent Owner’s argument. Although Petitioner is correct that Roberts discloses different embodiments for conveying configuration information, those embodiments are distinct. See Ex. 1004, that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 20

  Patent outcomesUS 11,050,615 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,050,615
• Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCSome claims unpatentable
  PTAB · Aug 5, 2024 · IPR2023-01353 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–4, 6–11, and 13–20 are unpatentable as obvious over Sourcefire and Emerging Threats; claims 5 and 12 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Staniford’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and four years of industry experience,” and “would have had a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 16 (citing Ex. 1003 ¶¶ 23, 25). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “We largely agree with Patent Owner that there is no explicit claim- construction dispute. We address Patent Owner’s issues of what ordinarily skilled artisans would have considered in creating and implementing packetfiltering rules in the discussion below. The preservation of the flow of normal legitimate network traffic without disruption is one aspect that those with a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks would have considered. Nonetheless, overall, we determine that the plain and ordinary meaning of “configured to prevent an exfiltration operation,” does not require preventing all exfiltrations from occurring, nor allowing all non-exfiltration traffic, and that we need not consider the preservation of the flow of normal legitimate network traffic without disruption in the context of that claim construction. We determine that no claim terms need to be construed expressly for purposes of this Decision.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with Petitioner. The identified aspects of Emerging Threats website would have allowed interested parties to locate the rule sets, download the rule sets and make determinations regarding what rule to use in a packet-handling system, such as Sourcefire. Emerging Threats need not be indexed or broadly searchable under Petitioner’s theory of the ground of unpatentability, namely that Emerging Threats was known, one of ordinary skill in the art would have gone to Emerging Threats, and downloaded the emerging-all.rules file, guided by the documentation wiki. As such, we do not agree with Patent Owner’s argument that “the record evidence of this” slip op. at 16

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “With respect to Petitioner’s assertions of collateral estoppel, notably in the Petition at pages 47, 49, 51, 52, and 54, with respect to limitations [1a] through [1d], we agree with Petitioner that Patent Owner is estopped from asserting that Sourcefire is not prior art to the challenged claims, and also estopped from asserting that those limitations are not taught or suggested by Sourcefire, to the extent that the limitations “do not materially alter the question” of patentability relative to the elements of the claims of the ’552 patent. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). Independent Claim 1 a. Petitioner’s Assertions As discussed above, we concur with Petitioner that collateral estoppel exists with respect to limitations [1a] through [1d]. Thus, we begin with a discussion of Petitioner’s assertions regarding claim limitation [1e].” slip op. at 21

  Patent outcomesUS 10,567,343 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,567,343
• Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCSome claims unpatentable
  PTAB · Aug 5, 2024 · IPR2023-00446 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–4, 6–11, and 13–20 are unpatentable as obvious over Sourcefire and Emerging Threats; claims 5 and 12 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with Petitioner. The identified aspects of Emerging Threats website would have allowed interested parties to locate the rule sets, download the rule sets and make determinations regarding what rule to use in a packet-handling system, such as Sourcefire. Emerging Threats need not be indexed or broadly searchable under Petitioner’s theory of the ground of unpatentability, namely that Emerging Threats was known, one of ordinary skill in the art would have gone to Emerging Threats, and downloaded the emerging-all.rules file, guided by the documentation wiki. As such, we do not agree with Patent Owner’s argument that “the record evidence of this” slip op. at 16

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “With respect to Petitioner’s assertions of collateral estoppel, notably in the Petition at pages 47, 49, 51, 52, and 54, with respect to limitations [1a] through [1d], we agree with Petitioner that Patent Owner is estopped from asserting that Sourcefire is not prior art to the challenged claims, and also estopped from asserting that those limitations are not taught or suggested by Sourcefire, to the extent that the limitations “do not materially alter the question” of patentability relative to the elements of the claims of the ’552 patent. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). Independent Claim 1 a. Petitioner’s Assertions As discussed above, we concur with Petitioner that collateral estoppel exists with respect to limitations [1a] through [1d]. Thus, we begin with a discussion of Petitioner’s assertions regarding claim limitation [1e].” slip op. at 21

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

    “how and why persons of ordinary skill in the art would have modified the existing rules to prevent exfiltrations. PO Sur-reply 3. Patent Owner also argues that Petitioner’s assertions to make them “drop” rules, per Sourcefire, relies on what an administrator could have done, not what they would have been motivated to do. Id. at 4–5 (citing Pet. 57–58). We disagree with Patent Owner’s arguments. We continue to be persuaded that one of ordinary skill in the art, combining Sourcefire and Emerging Threats, would have understood that downloaded rules should be reviewed, and it would have been obvious to enable rules that such persons deemed appropriate. We find Dr. Staniford’s testimony to be persuasive on this point. See Ex. 2011, 67:10–68:24, 69:8–72; Ex. 1020, 109. We acknowledge that downloading all of a particualr ruleset from Emerging Threats and enabling all the rules, might have resulted in a drop in performance of the network appliance, but, at the same time, we are significant drop in performance, especially if a potential threat might be sufficient to warrant a minor performance hit. Patent Owner’s counsel acknowledged at oral hearing that instituting all rules of a set in “alert” mode would not result in a decrease in performance, even though some computational outlay must be engaged to engage those alert rules. See Hr’g Tr. 24:24–25:4. We are persuaded that judiciously implementing certain rules would not necessary result in a network device that is unusable. Additionally, there is testimony from Dr. Staniford that “you start out with your rules in alert because there might be false positives. I mean, for the best rule in the world, Snort wasn’t known for false positives in the rules, when you apply them to a large network.” Ex. 2011, 68:2–7. As such, we continue to determine that it would have been obvious, in combining Sourcefire with Emerging Threats, for one of ordinary skill in the art to have downloaded rules and implemented specific rules.” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “Reviewing all of the evidence of record, we are persuaded that the Petition’s obviousness rationale based on Sourcefire and Emerging Threats is not guided by impermissible hindsight bias. We find persuasive Dr. Staniford’s testimony that one of ordinary skill in the art would have understood that “this rule [SID:2003021] was not directed to looking for instances of exploits or attacks (which would be invisible within the encryption) but rather was looking for exfiltration of some kind of encrypted data.” Ex. 1003 ¶ 228. As discussed by Petitioner, such recognition was also made by Mr. Marinho and Dr. Goodrich, such that the rule would have been understood to possibly prevent exfiltrations. We continue to be persuaded that Petitioner provides that a correspondence exists between the REQUIRE-TLS-1.1-1.2 operator in the ’343 Patent and SID:2003021 in Emerging Threats, in that both detect an SSL/TLS version in application packet header field values to detect exfiltration attempts using out-of-date encryption protocols. Pet. 43 (citing Ex. 1003 ¶¶ 229–230). We are ’343 Patent discloses the interruption of a similar type of exfiltration, without resorting to impermissible hindsight bias, that Patent Owner asserts. Patent Owner has provided no evidence that Petitioner used the specification of the ’343 Patent to find an applicable rule in Emerging Threats, as opposed to the testified-version provided by Dr. Staniford that he recalls “working on a similar feature where we looked for large encrypted transmissions outbound from the network on non-HTTP ports as a possible symptom of exfiltration of large amounts of data.” Ex. 1003 ¶ 228. Thus, we are not persuaded by Patent Owner’s arguments.” slip op. at 30

  Patent outcomesUS 10,567,343 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,567,343

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.