• Nikon Corporation v. ASML Netherlands B.V. Carl Zeiss AGRehearing denied
  PTAB · Oct 4, 2018 · IPR2018-00688 · APJ Jeffrey S Smith · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving institution in place for claims 1–4, 6, 7, 15, 16, and 19 because it found no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he 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 › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for petitioner

    “function limitations because, according to Patent Owner, we did not address Patent Owner’s contention that Petitioner’s analysis did not show that the prior art structures are the same or equivalent to structures disclosed in the Specification for performing the functions recited in claims 15, 16, and 19. Req. 3–6. We did address Patent Owner’s contention in our Decision. Dec. 18. In our analysis of the means plus function limitations recited in claim 15, we stated that The Petition identifies the structure in the Specification corresponding to the claimed “first filtering means” as a linear matched filter, and identifies the equivalent structure in Yow as a matched bandpass filter. Pet. 13–14, 27. The Petition identifies the structure in the Specification corresponding to the claimed “second filtering means” as a non-linear filter, and identifies the equivalent structure in Yow as a non-linear edge detector. Pet. 14, 27. Id. Our Decision includes similar analyses for claims 16 and 19. See Dec. 19. Patent Owner does not persuade us that we misapprehended the law for means plus function limitations. Rather, Patent Owner simply disagrees with our Institution Decision on this issue. Mere disagreement with our conclusion is not a proper basis for rehearing.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner did not establish sufficiently that Yow Thesis was available as a printed publication, we should not have instituted trial on the grounds based on Yow Thesis. Req. 6–7 (citing Dec. 26). However, at this time, if the Board institutes a trial, the Board will institute on all challenges raised in the Petition. See Guidance on the Impact of SAS on AIA Trial Proceedings, April 26, 2018, available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial. Accordingly, we deny Patent Owner’s Request for Rehearing.” slip op. at 4

  Claim construction
  Patents in suitUS 6,463,163
• Nikon Corporation v. ASML Netherlands B.V. Carl Zeiss AGRehearing denied
  PTAB · Oct 1, 2018 · IPR2018-00687 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–12 unchanged because Patent Owner showed no overlooked argument or misapprehended law.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We are not persuaded by Patent Owner. Patent Owner does not contend that we overlooked or misapprehended its argument. Indeed, we discussed it in detail. Dec. 16–20. Patent Owner also does not persuade us that we misapprehended the law of obviousness. Rather, Patent Owner simply disagrees with our Institution Decision on this issue. Nevertheless, mere disagreement with our conclusion is not a proper basis for rehearing. Accordingly, we deny Patent Owner’s Request for Rehearing.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We note that our determination that there would have been reasons to modify Takahashi is not final and that Patent Owner is not precluded from raising in its Patent Owner Response the arguments presented in the Request for Rehearing.” slip op. at 4

  § 103 obviousnesscites KSR
  Patents in suitUS 6,731,335
• Cisco Systems Inc. v. Uniloc USA, Inc., And Uniloc Luxembourg, S.A.Rehearing denied
  PTAB · Aug 3, 2018 · IPR2017-00198 · APJ Jeffrey S Smith · IPR · Rehearing

  The Board denied rehearing, finding no misapprehension or overlooked evidence supporting its determination that claims 1, 2, 5–10, 8–11, 12, and 18–23 were unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “process disclosed by Haims. Req. Reh’g 3.1 Patent Owner’s challenge does not meet the standard set forth for a Request for Rehearing, which requires a party to “identify . . . the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). As Patent Owner did not address this issue in a motion, an opposition, or a reply, the Board could not have misapprehended Patent Owner’s argument.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “disclaimed the selection process disclosed by Haims, we find this contention unpersuasive. “[T]he PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Assuming arguendo that the doctrine of prosecution history disclaimer applies to this inter partes review, the purported disavowal of claim scope must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). On the record before us, we conclude that the prosecution history does not evidence such an unambiguous, clear, and unmistakable disavowal. We read the cited portion of the prosecution history as presenting arguments to the Examiner to distinguish the claim from Haims based on the claim’s recited limitations. At most, applicant’s arguments during prosecution merely shed light on the claim limitations that applicant alleged Haims did not teach. We determine that one of ordinary skill in the art would not have understood applicant to have made a clear and unmistakable” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Hamberg and Lamb. See Reh’g Req. 3–4. Therefore, Patent Owner’s allegation that Haims teaches the same selection process as Hamberg, even if true, improperly shifts focus from the combination of Hamberg and Lamb. Patent Owner alleges Petitioner does not provide proper reasoning to combine Hamberg and Lamb. Reh’g Req. 3–4 (arguing “Petitioner parsed” and “Petitioner argued”). These allegations fail to address what the FWD overlooks or misapprehends. In any event, the FWD addresses motivation and the combination. See, e.g., FWD 15–23.” slip op. at 4

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Q. And you – do you agree or disagree that Max is participating in the chat session with the conference call requester? Mr. McDole: Objection, leading. A. I think it is – could kind of go either way. I certainly think that it could be considered participating in the sense that he’s receiving messages, not participating in the sense of sending. So I mean I think it is reasonable to say that it is participating, but – it is arguably the other way, too. It is not clear. Ex. 1017, 253 5–16. As an initial matter, Patent Owner, in the Request for Rehearing, does not identify where this purportedly ignored testimony was brought to our attention by Patent Owner. Nonetheless, Dr. DiEuliis, at best, testified that Max “could be considered participating,” but, in the same sentence, Dr. DiEuliis testified that Max is “not participating in the sense of sending.” Dr. DiEuliis continued, “I think it is reasonable to say that it is participating, but -- it is arguably the other way, too.” Although we did not cite to this testimony, such testimony is cumulative, because Dr. DiEuliis testified here, as in the cited testimony, that Max is not participating. Further, in our Decision, we evaluated the testimony of Dr. DiEuliis in light of Hamberg’s teaching that Max is listed as “absent” and noted as “sleep” to determine that Max is not participating. FWD 29.” slip op. at 5

  Claim construction§ 103 obviousness
  Patents in suitUS 7,853,000
• Lenovo (United States) Inc. / EMC Corporation v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Jun 20, 2018 · IPR2017-00477 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1 and 9 are unpatentable as obvious over Cramer and Banga; claim 9 is also anticipated by Cramer, while anticipation was not shown for claim 1.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “skill in the art should be adopted nor how the different levels affect the parties’ analyses. Although there are slight differences between the proposed levels of ordinary skill in the art, the parties agree that an ordinarily skilled artisan would have had a four-year technical degree with work experience in computer networks or storage systems. Pet. 10 (citing Ex. 1002 ¶ 26); Ex. 2001 ¶ 18. Both parties also agree that additional education may take the place of educational experience. Pet. 10 (citing Ex. 1002 ¶ 26); Ex. 2001 ¶ 18. Based on the evidence of record, the subject matter at issue, and the prior art of record, we adopt Patent Owner’s level of ordinary skill in the art, specifically that a person of ordinary skill in the art at the time of the claimed invention would have had “bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with two to three years of work experience in the field of computer networking, storage systems, or a related field.” We agree with both parties that additional education would make up for less professional experience. Ex. 2001 ¶ 18; Ex. 1002 ¶ 26. We note, however, that our analysis would be the same if we adopted either party’s proposed level of ordinary skill.” slip op. at 8

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

    “The Decision on Institution addressed the broadest reasonable interpretation of “control portion,” determining that this term “encompasses a portion of an information packet that includes information used to determine how the packet should be routed.” Dec. on Inst. 14. During the trial, Patent Owner stated that it “does not concede the Board’s construction is correct and maintains that a control portion should be construed to mean ‘a contiguous portion of a packet that includes information used to determine how the packet should be routed.’” PO Resp. 8. Patent Owner, however, further states that “the Board does not need to resolve this issue to decide any dispute in this IPR.” PO Resp. 8. Following institution, the parties did not otherwise address claim construction. See PO Resp. 8; Pet. Reply 2. Based on the record developed during trial, we determine that we need not expressly construe any term in the challenged claims to decide the issues of patentability before us.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed

    “insufficient to support Petitioner’s assertion of anticipation because Cramer does not describe associating first and second host addresses with a common frame address. PO Resp. 21–25. We agree with Patent Owner. Although Cramer describes a filer with a single network adapter, Cramer never expressly describes associating two host addresses with the MAC address of that adapter. In step 410 of Figure 4 of Cramer, “the IP address for the storage device is mapped to a network interface controller (NIC).” Ex. 1005, 9:44–45 (emphasis added). Cramer discloses repeating the process in Figure 4 for each additional device that needs to be configured (Ex. 1005, 10:4–6, Fig. 4 (step 414), but it does not expressly describe that the next volume’s IP address will be mapped to the same NIC. As Patent Owner correctly points out, “[t]he remainder of Cramer’s discussion and figures do not mention or illustrate a single instance where two IP volumes are assigned to the same NIC and therefore share a common frame address.” PO Resp. 22. For example, referring to Figure 5, Cramer discloses: “Connected to Filer 1 is a volume of disks 510. In this example, Filer 1 includes three separate network interface [controllers] (NICs), namely E0, E1 and E2. Filer 2 has NICs E4A and E4B.” Ex. 1005, 10:15–19. Figure 5, therefore, does not show two volumes whose IP addresses are assigned to the same NIC. We do not find express disclosure in Cramer of this many-toone correspondence of IP addresses to frame address. In its Reply, Petitioner notes Cramer describes that filers can serve 150 or more volumes, and Petitioner argues that “there is no suggestion in Cramer that any filer would have 150 or more NICs.” Pet. Reply 21 (citing Ex. 1005, 2:19–21, 4:47–50); see Ex. 1005, 2:19–21 (“Currently available filer implementations can serve a large number of discrete volumes (150 or more, for example).”). This disclosure may make readily apparent to a person of ordinary skill in the art the desirability of using fewer NICs in such a situation and sharing those NICs among multiple volumes, but this is insufficient for anticipation because Cramer still lacks disclosure of associating two IP addresses with the MAC address of one NIC. See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). Furthermore, Petitioner does not assert that this feature is inherent in Cramer. See Paper 29, 7 (In response to Patent Owner’s Observation 8, Petitioner states: “Petitioner has not relied upon the inherent teachings of any references.”). Having considered the record developed during trial, we determine Petitioner has not shown Cramer expressly describes “the first and second host addresses . . . are both associated with a common frame address that corresponds to a network interface that communicatively couples the packet processor to a network.”” slip op. at 24

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

    “We agree with Patent Owner’s position that pointing out similarities in references may not be, by itself, sufficient to support a legal conclusion of obviousness. Rather, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We, however, do not understand Petitioner’s arguments regarding the similarities of Cramer and Banga to be the rationale to combine. Instead, we understand these arguments to be directed to reasonable expectation of success. For example, Petitioner quotes Dr. Karlin’s testimony that “[t]his combination would be straightforward, since Cramer and Banga have similar system designs and would require no more than routine skill in the art because, e.g., the two patents are both NetApp patents, describe similar systems, and are directed to the same person of skill in the art.” Ex. 1002 ¶ 75, quoted in Pet. 60. Petitioner provides separate reasoning to explain why a person of ordinary skill in the art would have been motivated to combine Banga’s teaching of assigning multiple IP addresses to a common MAC address with the teachings of Cramer. Pet. 59. In particular, Petitioner argues: As explained by Dr. Karlin, “a person of ordinary skill in the art reading Cramer and Banga would be motivated to utilize the common frame address with multiple IP addresses disclosed in Banga with the multiple virtual objects associated with multiple IP addresses disclosed in Cramer. For example, Banga discusses that with a common frame address, ‘the capabilities of the NIC are effectively shared between’ multiple virtual objects and a person of skill in the art would understand the advantages of associating multiple virtual objects with a single NIC having a single MAC, i.e., allowing the capabilities of a single NIC to be ‘effectively shared.’ Banga at 12:1-9.” Pet. 59–60 (quoting Ex. 1002 ¶ 75). Patent Owner argues this is not sufficient articulated reasoning to” slip op. at 27

  Patent outcomesUS 8,387,132 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,387,132
• EMC Corporation / Lenovo (United States) Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Jun 20, 2018 · IPR2017-00374 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1, 3–9, 13, 15, 16, and 18–21 are unpatentable as obvious over OceanStore; anticipation and the OceanStore–Condor combination were not established, nor was claim 17 obvious over OceanStore.

  RulingsFinal written decision

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

    “The parties dispute the proper construction of the limitation “[r]epresenting with the corresponding software-based NAS component that the selected distributed devices respectively comprise NAS devices” as recited in claims 1 and 13. See Pet 11–12; PO Resp. 8–11; Reply 3–8. Specifically, the parties proposed the following constructions: Petitioner “using the corresponding software-based NAS components of the selected distributed devices to mimic dedicated NAS devices”” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Although we agree with Patent Owner regarding the use of the term “respectively,” we do not understand its use to require “the selected distributed devices to cause each selected distributed device to separately appear to network-connected user devices as a dedicated NAS device.” We cannot construe individual terms in isolation. Rather, we must consider the claim as a whole in view of the specification. Specifically, we must consider the implications of other terms recited in claims 1 and 13 (e.g., “location information”) and how the claims are supported by the disclosed embodiments.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contests Petitioner’s definition of a person of ordinary skill in the art, specifically arguing that “Petitioners’ proposed requirements, especially with regard to work experience, are higher than can be reasonably supported.” PO Resp. 5–6. Patent Owner notes that Petitioners’ declarant, Dr. Kubiatowicz, testified on cross-examination that “somebody coming directly out of college, likely, would need a couple of extra years to understand this,” and that “a little bit of professional experience might help them -- would help them understand the details involved in this case.” Id. at 6 (citing Ex. 2002, 25:13–14; 26:2–5). Patent Owner’s declarant, Dr. Shenoy, testified that, at the time “of the ’827 patent, one of ordinary skill in the art would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” Ex. 2003 ¶ 19. According to Dr. Shenoy, “[l]ack of experience can be remedied by additional education or vice versa.” Id. Based on our review of the ’827 patent, the types of problems and solutions described in the ’827 patent and cited prior art, and the testimony of Dr. Kubiatowicz and Dr. Shenoy, we adopt and apply Patent Owner’s definition of a person of ordinary skill in the art, specifically that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” We also determine that such a person would have been familiar with computer systems architecture and design, and would have been aware of design trends relating to distributed processing systems.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Based on the record before us, we are not satisfied Petitioner has shown adequately for an anticipation challenge that OceanStore discloses “wherein the respective client agents for particular distributed devices of the plurality of distributed devices have corresponding software-based network attached storage (NAS) components configured to assess unused or under-utilized storage resources in selected distributed devices of the plurality of distributed devices” as recited in claim 1 and similarly recited in claim 13. Although it appears OceanStore discloses distributed routing in order to find and fulfill a request for an entity with a GUID (global unique identifier) (see Ex. 1003, 193), there does not appear to be an explicit disclosure that any software-based network attached storage (NAS) component on a distributed device assesses unused or under-utilized storage resources in selected distributed devices. Nor does Petitioner adequately explain how such an assessment would be inherent in the disclosure of OceanStore. We note that Petitioner cites to the prosecution history of the ’827 patent while making arguments regarding claim construction. See Pet. 12 n2. Although the ’827 patent prosecution history states that its “client agent programs must be capable of assessing what capabilities are spare and/or unused (unused or under-utilized)” (Ex. 1015, 8), such a statement by the patent applicant does not relieve Petitioner of its burden to point out where such a feature is found in the prior art reference that forms the basis of its anticipation challenge. Accordingly, we determine Petitioner has not established by a preponderance of the evidence that OceanStore describes this limitation of claims 1 and 13. d. Summary Petitioner has failed to demonstrate that OceanStore describes every limitation of claims 1 and 13. Accordingly, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 1 and 13 are anticipated under 35 U.S.C. § 102(a) based on OceanStore. 3. Analysis of Cited Art as Applied to Dependent Claims 3–9 and 15–21 Petitioner contends dependent claims 3–9 and 15–21 of the ’827 patent are unpatentable under 35 U.S.C. § 102(a) in view of OceanStore. Pet. 36–44, 46. For the same reason as discussed above in regard to independent claims 1 and 13 above, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 3–9 and 15–21 of the ’827 patent are anticipated under 35 U.S.C. § 102(a) based on OceanStore.” slip op. at 25

  Patent outcomesUS 8,275,827 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,275,827
• EMC Corporation / Lenovo (United States) Inc. et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jun 20, 2018 · IPR2017-00439 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1, 3–6, 8, 9, 13, 15–18, 20, and 21 are unpatentable over Carter; claims 5 and 17 are also obvious over Carter and Pitzel.

  RulingsFinal written decision

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

    “We agree with Patent Owner regarding the ordinary meaning of the term “respectively.” Specifically, we understand that the word “respectively” can be an adverb that means “for each separately or in turn, and in the order mentioned.” The use of “respectively” as an adverb in the English language requires parallelism. See Ex. 3002. In other words, there must be a direct one-to-one correspondence and specific referents must be individually identified before there can be a “parallel list” of attribute values applicable to each, in that order. The term “respectively” also can be an attributive adjective that means “concerning or appropriate to each of several individually.” Id. In the present case, the term “respectively” appears to modify “the selected distributed devices.” Because specific referents are not individually identified, we understand the term to act as an attributive adjective modifying each of several selected distributed devices. Although we agree with Patent Owner regarding the use of the term “respectively,” we do not understand its use to require “the selected distributed devices to cause each selected distributed device to separately appear to network-connected user devices as a dedicated NAS device.” We cannot construe individual terms in isolation. Rather, we must consider claims as a whole in view of the specification. Specifically, we must consider the implications of other terms recited in claims 1 and 13 (e.g., “location information”) and how the claims are supported by the disclosed embodiments.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contests Petitioner’s definition of a person of ordinary skill in the art, specifically arguing that “Petitioners’ proposed requirements especially with regard to work experience, are higher than can be reasonably supported.” PO Resp. 5. Patent Owner notes that Petitioners’ declarant, Dr. Kubiatowicz, testified on cross-examination that “somebody coming directly out of college, likely, would need a couple of extra years to understand this,” and that “a little bit of professional experience might help them -- would help them understand the details involved in this case.” Id. (citing Ex. 2002, 25:13–14; 26:2–5). Patent Owner’s declarant, Dr. Shenoy, testified that, “at the time of the ’827 patent, a person of ordinary skill in the art should have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” Ex. 2003 ¶ 19. According to Dr. Shenoy, “[l]ack of experience can be remedied by additional education or vice versa.” Id. Based on our review of the ’827 patent, the types of problems and solutions described in the ’827 patent and cited prior art, and the testimony of Dr. Kubiatowicz and Dr. Shenoy, we adopt and apply Patent Owner’s definition of a person of ordinary skill in the art, specifically that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” See id. We also determine that such a person would have been familiar with computer systems architecture and design, and would have been aware of design trends relating to distributed processing systems.” slip op. at 18

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

    “Despite Patent Owner’s arguments, we find that Carter’s policy element 290 (a software module) is configured to assess unused or under-utilized storage resources in selected distributed devices of the plurality of distributed devices. We understand policy element 290 to satisfy this limitation because Carter specifically discloses that policy element 290 “acts as a controller to determine the availability of resources, such as printer capabilities, hard-disk space, available RAM and other such resources.” Ex. 1140, 36:27–29 (emphases added). We credit the testimony of Dr. Kubiatowicz, who during his deposition stated, “I would say this policy controller certainly can evaluate the hard disk space on the local node, but could also potentially evaluate storage throughout the system by communicating with other nodes.” Ex. 2002, 86:13–16; see id. at 88:5–7; see also id. at 88:12–16 (“What I said was that this policy element is determining the availability of resources. So it’s assessing whether or not hard disk space of various sorts is available. So it’s availability, not just available.”); see id. at 88:18–89:18, 90:5–91:1. We further credit the testimony of Patent Owner’s declarant, Dr. Shenoy, who testified that Carter discloses “determin[ing] the free volume space available for allocation.” See Ex. 1144, 142:19–20 (referencing Ex. 1140, 19:14–17). Reading directly from Carter, Dr. Shenoy further testified that Carter discloses “request[ing] the total available space information and us[ing] this information to quickly determine whether to proceed with the allocation processing.” Id. at 142:14–17, 143:1617. In view of the explicit disclosure of Carter and the testimony of both declarants, we find that Carter’s controller performs an “assessment” in order to “determine the availability of resources.” Additionally, Carter states that policy controller 290 “can employ any of the suitable heuristics to direct the elements, such as the paging controller, disk directory manager, and other elements to dynamically distribute the available resources.” Ex. 1140, 36:29–37:2. Thus, we agree with Petitioner’s argument, as supported by the testimony of Dr. Kubiatowicz, that policy element 290 assesses the unused or underused storage resources when it determines the availability of such resources and uses some heuristics when distributing those resources that were assessed. See Pet 39 (citing Ex. 1102 ¶ 118). Accordingly, based on the entirety of the record before us, we find Petitioner has shown by a preponderance of the evidence that Carter discloses the “assessing” limitations of claims 1 and 13.” slip op. at 31

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

    “We agree with Patent Owner that Petitioner fails to offer sufficient explanation as to why a person of ordinary skill in the art would have combined the teachings of Carter and Condor. Rather, Petitioner appears to argue that, based on the advantages described by Condor (Ex. 1017, 5), and using well-known techniques with unspecified predictable results, a person of ordinary skill in the art would have had sufficient reason to combine these disparate elements taught in the prior art references to render the challenged claims obvious. Pet. 61–66. Yet, other than Petitioner’s cursory assertion of “advantageously incorporat[ing] the central coordinator in Condor to provide a centralized mechanism to manage resource sharing” (Pet. 66), which cites equally cursory and unsupported testimony by Dr. Kubiatowicz (Ex. 1102 ¶ 199), Petitioner fails to identify what particular advantages or efficiencies would have prompted a person of ordinary skill in the art to combine Condor’s scheduler with Carter’s system. Furthermore, Dr. Kubiatowicz’s testimony regarding predictable results and obviousness to try are similarly lacking in elaboration and substantiation. See Ex. 1102 ¶¶ 200–201. Such conclusory statements and unspecific testimony without evidence on the record cannot satisfy the Petitioner’s burden of demonstrating obviousness. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); I/P Engine, Inc. v. AOL Inc., 576 F. App’x 982, 999 (Fed. Cir. 2014) (“The testimony of the Defendants’ expert amounts to a ‘mere conclusory statement’ that may not serve as a basis for finding the asserted claims obvious.”); see also InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (holding that expert’s testimony could not support a finding of obviousness where “testimony primarily consisted of conclusory references to [the expert’s] belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so”); see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Although Petitioner has not provided a sufficient rationale to combine in this asserted ground of unpatentability, Petitioner has otherwise demonstrated that claims 4, 6, 16, and 18 are unpatentable under 35 U.S.C. § 102(b) because they are anticipated by Carter. Petitioner, however, has not asserted claims 7 and 19 are unpatentable under any other ground in this proceeding. Therefore, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 7 and 19 of the ’827 patent are unpatentable under 35 U.S.C. § 103(a) in view of Carter and Condor.” slip op. at 59

  Patent outcomesUS 8,275,827 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,275,827
• Unified Patents, Inc. v. Harry Heslop & Sportbrain Holdings LLCRehearing denied
  PTAB · Apr 18, 2018 · IPR2016-01464 · APJ Jeffrey S Smith · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1–16 unpatentable based on Vock and Smith and the failure to establish conception of periodic transmission.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2

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

    “We determine that Patent Owner’s contention that Vock teaches away from using the pedometer of system 620 shown in Figure 21 with the system shown in Figure 1 is inconsistent with Vock’s disclosure that “system 620 [shown in Figure 21] is useful to joggers who can gate it to serve as a pedometer” and that “[d]ata may also be acquired by the accelerometer and telemetered to the electronics 626 via an RF link 631 back to a remote base 632 for storage and processing (e.g., such as the base station 70, FIG. 1).” Ex. 1006, 50:5, 49:21–23, and Fig. 21. We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4

  • BurdenDecided for petitioner

    “periodically transmitting the personal data from the wireless communication device to a network server over a wireless network.” We determined that the cited disclosure of a user telephoning a workstation to transfer data does not show conception of “periodically transmitting the personal data from the wireless communication device to a network server over a wireless network” as claimed. Dec. 31–32. Accordingly, the Decision did not misapprehend or overlook any slip op. at 7

  § 103 obviousness
  Patents in suitUS 7,454,002
• Cisco Systems, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg, S.A.All claims unpatentable
  PTAB · Apr 6, 2018 · IPR2017-00058 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1, 2, 5–10, 12, 18–26, 29, 30, 36, 37, 49–53, 65, and 66 are unpatentable as obvious under three combinations of Hamberg, Lamb, Ludwig, and Vassilovski.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Although there is some difference between the ranges of approximately five years of experience and at least two years of experience, there is also an overlap between approximately five years and at least two years. For example, someone with approximately five years of experience would also have at least two years of experience. Dr. DiEuliis, when asked whether a person ordinary skill in the art could have five years of experience in computer programming software development, answered “certainly, of course, yes.” Ex. 1017, 68:14–21. Further, both experts appear to agree on the skills possessed by a person of ordinary skill. For example, Dr. Houh testifies that a person of ordinary skill does not “need to be taught how to write computer programs or functions.” Ex. 2002, 129:20–130:4. Dr. DiEuliis testifies that a person of ordinary skill “would be able to program in JAVA.” Ex. 1017, 65:25–66:10. We discern no material dispute arising from the two experts’ definitions. Both definitions are consistent with the level of ordinary skill reflected in the prior art references of record. We adopt Dr. Houh’s definition of the person of ordinary skill in the art.” slip op. at 7

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

    “Petitioner proposes constructions of the claim terms “network access device” (recited in all claims), “address” (recited in claim 18), “automatic number identifier” (recited in claim 19), and “VoIP address” (recited in claim 20). Pet. 6–9. Patent Owner does not present any claim constructions in its Patent Owner Response. PO Resp. 13 (arguing “the parties’ present disputes make it unnecessary to construe the terms Petitioner proposes”). On the other hand, Patent Owner also states “[t]he Petition at least implicitly injects a dispute over the proper construction for ‘generating a conference call request responsively to a single request by the conference call requester’, as recited in each challenged claim.” Id. at 14. We address Patent Owner’s arguments regarding the “generating” clause below. Neither party has identified any other dispositive term for construction. We determine no terms need an explicit construction to resolve a controversy in the instant case. 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). C. Asserted Obviousness Over Hamberg and Lamb: Claims 1, 2, 5, 6, 8,” slip op. at 8

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

    “In addition, as quoted above, Dr. Houh credibly explains that one of ordinary skill would have recognized that the combination of Hamberg and Lamb would provide several benefits, and, therefore, the ordinary artisan would have had a reason to make the combination even if some additional time and effort would be required to do so. For example, a call requester would be able to determine when to make a call in a more efficient manner, by noting the availability and nonavailability of members. Ex. 1003, p. 53.” slip op. at 21

  Patent outcomesUS 7,804,948 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,804,948
• Unified Patents Inc. v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Mar 26, 2018 · IPR2016-01643 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1, 2, 4, 12, and 14 are unpatentable: claims 1, 4, 12, and 14 as anticipated by Karedla, and claim 2 as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Citing the testimony of Dr. Paul Franzon (“Dr. Franzon”), Petitioner contends that a person of ordinary skill in the art at the relevant time “would have had (i) a B.S. degree in electrical engineering, computer engineering, computer science, or equivalent training, or (ii) approximately two years of experience or research related to computer systems.” Pet. 11 (citing Ex. 1002 ¶ 44). Although Patent Owner does not propose its own skill level, Patent Owner’s declarant, Dr. Frederic T. Chong (“Dr. Chong”), testifies “Dr. Franzon’s formulation of the field of the invention and the level of ordinary skill in the art is sufficiently accurate to resolve all of the issues I analyzed and opined on in this declaration.” Ex. 2006 ¶ 23. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that Petitioner’s proposed skill level is appropriate, and we adopt Petitioner’s articulation of the level of ordinary skill in the art for our analysis below. Ex. 1002 ¶ 44; Ex. 2006 ¶ 23.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Petitioner proposes constructions for the following terms/phrases: “reading extending segment(s) of data”; “files”; “frequency factor(s)”; and “selftuning.” Pet. 15–19. Patent Owner only proposes construction of the term “frequency factor.” PO Resp. 8–29. For our analysis in this Decision, we determine that only “frequency factor” requires express construction.” slip op. at 12

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

    “We agree with Petitioner that Patent Owner’s proposed requirement of “showing with fair degree of certainty how often each of the corresponding files are requested” excludes the self-tuning embodiments disclosed in the specification from the scope of the claims. Reply 2–3 (citing Ex. 1001, 7:8– 10; Ex. 1017, 29:10–20). Such a result is inconsistent with the claims themselves. For example, dependent claims 7 and 13, which depend, respectively, from claims 4 and 12, expressly recite that the caching methods are “self-tuning,” and, therefore, the scope of the independent claims necessarily encompasses self-tuning. Furthermore, the Federal Circuit has stated “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). The specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. at 1315. In particular, a “claim construction that excludes [an] . . . embodiment [described in the specification] is rarely, if ever, correct and would require highly persuasive evidentiary support.” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (citation omitted). Here, Patent Owner’s construction would exclude not only embodiments disclosed in the specification but also those expressly claimed, as noted above. We agree with Petitioner that the intrinsic evidence in the specification is more instructive than extrinsic evidence such as a dictionary definition of “indicate.” See Phillips at 415 F.3d 1317. Furthermore, claims 4 and 12 do not limit the frequency factor to indicating a count of the number of times each of the corresponding files are requested. Rather, claims 4 and 12 recite frequency factors “indicating how often each of the corresponding files are requested.” Thus, we determine that a frequency factor is not limited to indicating a count but encompasses indicating a relative metric such as “how often.” See Ex. 1017, 39:12–17. Given the use of the word “frequency” in the claim term, the frequency factors must be based to some extent on frequency of access or use. We determine that the broadest reasonable interpretation of “frequency factor” recited in claims 4 and 12, read in light of the specification, including the self-tuning embodiments, encompasses at least “an indicator based on frequency of use or access.”” slip op. at 16

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

    “2. Analysis a. Karedla as prior art Petitioner contends that Karedla is prior art to the ’745 patent under 35 U.S.C. § 102(b). Pet. 4, 19 (citing, e.g., Ex. 1004, 2–3; Ex. 1013; Ex. 1012 ¶ 3). Patent Owner does not challenge in its Response that Karedla is prior art under 35 U.S.C. § 102(b). See generally PO. Resp. We determine that Karedla was published in March 1994. See Pet. 19; Ex. 1004, 1 (“March 1994”), 2 (Library of Congress stamp dated “MAR 22 1994”), 4 (“March 1994”); Ex. 1013 (printout from Library of Congress website identifying publication history and frequency). Accordingly, we find that Karedla is prior art to the ’745 patent, which issued from an application filed September 7, 2001, under 35 U.S.C. § 102(b).” slip op. at 21

  Patent outcomesUS 6,775,745 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,775,745
• Facebook, Inc. / Whatsapp Inc. v. Uniloc USA, Inc., And Uniloc Luxembourg, S.A.All claims unpatentable
  PTAB · Mar 13, 2018 · IPR2016-01756 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1, 3–6, 8–11, and 13–15 are unpatentable under § 103 over the combinations of Wu, Glasser, and DeSimone, with Howard and/or Young as specified.

  RulingsFinal written decision

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

    “Ex. 1001, 6:44–58 (emphasis added); accord Ex. 1009 ¶ 52. Thus, a conference call request identifies potential participants to a conference call using information stored previously somewhere in the system (in the conference server or in the requester’s NAD as disclosed above), with the information associated with the potential targets, such as an alias, a user name, a phone number, or another address for the potential targets. The Specification supports including some type of prior submission of information in several places. See, e.g., Ex. 1001, Fig. 3B (“Conference Server takes conference request, looks up profile information for targets in this conference.”), 6:14–16 (“As indicated by [Figure 1], the core of the present invention is the use of instant messaging to trigger initiation of a host initiated conference call.”) (emphasis added). In light of the Specification we construe “registration” as not encompassing a mere conference request message that identifies parties who are potential targets to a conference call using information associated with the potential targets, such as an alias, a user name, a phone number, or another address for the potential targets. See Ex. 1010, 10; Ex. 1009 ¶¶ 52– 53; Ex. 1001, 6:44–51, 59–62.1” slip op. at 9

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

    “We determine that Petitioner has articulated sufficient reasoning to support its conclusion that independent claims 1, 6, and 11 would have been obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In addition to the summary above, we adopt Petitioner’s showing as our own. See Pet. 22–50. Based on the foregoing discussion and the record, Petitioner has shown by a preponderance of the evidence that the combination of Wu, Glasser, and DeSimone renders claims 1, 6, and 11 unpatentable for obviousness.” slip op. at 25

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Further, Mr. Klausner testifies that “Wu discloses that the only server with which potential members might have to register is the login server, which is not ‘a conference call server’ because it has no role in initiating or establishing voice communication with potential members.” Ex. 1002 ¶ 108. Mr. Klausner continues: Moreover, Wu does not require that potential members register with any other component of the system, including with IM host complex 590 or any of its associated servers, which provide the instant messaging functionality. ([Ex. 1003] ¶ 52). Therefore, Wu discloses that voice communication may be initiated without requiring registration with a conference call server for establishing the voice communication by the potential members. Id. at ¶ 109. Mr. Klausner testifies that a person of ordinary skill would have found it obvious that other parts of the distributed system of Wu, including the conference call server, would not separately require that members enter registration information, because doing so could (a) annoy users by requiring them to perform the registration step again, and (b) reduce security by requiring subsystems aside from the login server to receive and handle critical registration information. Id. at ¶ 113. We credit this testimony and determine that Wu discloses or suggests, and does not teach away from, “without requiring registration with a conference call server for establishing the voice communication by the potential members including the first party and the at least one other party” as claimed.” slip op. at 24

  Patent outcomesUS 8,571,194 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents 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.