- Microsoft Corporation v. Ipa Technologies Inc.Institution deniedPTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13
Discretionary denialPatents in suitUS 7,036,128 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2
- BurdenDenied
“event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,036,128 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,036,128 - Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00864 · APJ Debra K Stephens · IPR · Final written decision
Claims 3, 5, and 9 are unpatentable under § 103 because the Board found the asserted prior-art combinations taught the limitations required by its claim construction.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have [had] at least a Bachelor of Science degree in Electrical Engineering, Computer Science, or an equivalent field, as well as at least 2-3 years of academic or industry experience in the field of content delivery networks or comparable industry experience(s)” (Pet. 13 (citing Ex. 1002 ¶ 32)). Patent Owner does not dispute Petitioner’s assertion regarding the education or experience of an ordinarily skilled artisan at the time of the invention (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F. 3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Houh and Jones (Ex. 1002 ¶ 32; Ex. 2018 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two to three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. Claim Terms Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation. b) Other terms Based on the trial record, we determine that no additional terms require explicit construction (see, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“independent claims 3 and 9 were mutually exclusive (Dec. to Inst. 8–9). We stated: As a matter of law, therefore, we determine with respect to claims 3 and 9, only one of the conditional limitations needs to be satisfied in the prior art to render the claim anticipated or obvious (see Ex Parte Schulhauser (Appeal No. 2013-007847 (PTAB Apr. 28, 2016) (precedential), at 8–10 (holding that conditional steps in process claims need not be carried out when conditions precedent to those steps are not satisfied to be within the broadest reasonable interpretation of the claim))” slip op. at 11
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision
Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts 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, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - Triple Plus Ltd. v. Mordechai Ben OldAll claims unpatentablePTAB · Aug 16, 2019 · PGR2018-00038 · APJ Bart A Gerstenblith · PGR · Final written decision
Claim 1 is unpatentable as obvious over the Triple+ NWL, including the obvious substitution of a butterfly valve for its ball valve.
RulingsFinal written decision- BurdenDecided for petitioner
“We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claim, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued” slip op. at 2
- ExcludeMotion to exclude, grantedGranted
“subject declaration was filed as Patent Owner’s Preliminary Response. Patent Owner’s Preliminary Response states: “Patent Owner, Mordechai Ben Old, hereby submits the following preliminary response in the form of declaration.” Paper 7, 2. To the extent Patent Owner’s Preliminary Response/declaration would be given any weight post-institution, we agree with Petitioner that it would be considered routine discovery and that Patent Owner was required to make himself available for deposition. See Practice Guide, 77 Fed. Reg. at 48,761 (“Routine discovery includes: . . . (2) the cross-examination of the other side[’]s declarants . . . .”). Patent Owner did not do so. Additionally, the record reflects that Patent Owner has continued to fail to participate in this proceeding. In particular, Patent Owner did not respond to our Order specifying “that Patent Owner shall appear . . . on or before May 30, 2019, and show cause as to why adverse judgment should not be issued against Patent Owner for abandonment of the contest pursuant to 37 C.F.R. § 42.73(b)(4).” Paper 14, 3. Accordingly, in light of Patent Owner’s failure to participate in the proceeding by appearing for a deposition by Petitioner or otherwise, we agree that the appropriate remedy is to exclude Patent Owner’s declaration, submitted as its Preliminary Response (Paper 7). Thus, to the extent we would have considered Patent Owner’s declaration at this post-institution stage of the proceeding, we decline to do so.3” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had: “a Bachelor of Science degree in a field of engineering or a closely related discipline, and at least one year of practical academic or industrial experience designing, testing and/or manufacturing fluid control valves.” Pet. 11 (citing Ex. 1003 ¶¶ 28–30). As discussed above, Patent Owner did not file a Response. We reiterate our preliminary finding from the Decision on Institution, that, consistent with the level of ordinary skill in the art reflected by the prior art of record, we adopt the level of ordinary skill in the art proposed by Petitioner based on the present record. See Dec. on Inst. 10; 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).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“one exception that the Triple+ NWL includes a ball valve whereas claim 1 requires a butterfly. See id. at 32–63; see also id. at 31 (“the Triple+ NWL discloses every element of claim 1 except for the choice of quarter turn rotary valve type,” i.e., the claimed butterfly valve). Petitioner asserts that “[t]he ball valve is interchangeable with the claimed ‘butterfly,’ and it would have been obvious to [a person of ordinary skill in the art] to substitute one for the other.” Id. at 35 (citing Ex. 1003 ¶¶ 36–40, 56–57). Petitioner relies upon Dr. Johnson’s testimony in support of this position. See, e.g., id. at 36 (citing Ex. 1003 ¶¶ 36–40). In particular, Petitioner states: a ball valve (like in the Triple+ NWL) is a member of the same family of valves as the butterfly. Except for the shape of the valve member, both are functionally and operationally identical, and both can and were used as shut-off valves for main water lines entering a residence or other structure. Id. (citing Ex. 1003 ¶¶ 36–40). Petitioner asserts that “[t]he Triple+ NWL used a ball valve and was intended for use as a shut-off valve on the main water line.” Id. at 37. Petitioner thus contends that: (1) this use for any quarter turn rotary valve type was well known to one of ordinary skill in the art, id. (citing Ex. 1003 ¶¶ 39–40); (2) “replacing a ball valve with a butterfly valve was a ‘simple design choice and an obvious replacement’” to a person of ordinary skill in the art, id. at 37–38 (quoting Ex. 1003 ¶¶ 56– 57); and (3) “[s]ubstituting one known type of a valve for another— particularly within the same family of valves such as the quarter turn rotary valve family—is the epitome of an obvious design choice” to a person of ordinary skill in the art, id. at 38 (citing KSR, 550 U.S. at 416, 421).7” slip op. at 17
Patent outcomesUS 9,671,031 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,671,031 - Dispersive Networks, Inc. v. Nicira, Inc.Rehearing grantedPTAB · Jul 17, 2019 · PGR2018-00063 · APJ Debra K Stephens · PGR · Rehearing
Patent Owner’s rehearing request was granted as to claim 7, which was removed from institution under § 112(b); institution on claims 1–6 and 8–11 remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
NonePatents in suitUS 9,722,815 - PTAB · Jun 19, 2019 · IPR2018-01159 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied West’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In a request for rehearing, we do not review the merits of the Institution Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked. 37 C.F.R. § 42.71(d) (“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,586,011 - RPX Corporation / Huawei Enterprise USA, Inc. et al. v. Parity Networks, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00100 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–4, 6–9, 11–16, and 18–19 as obvious over Wilford; claims 5, 10, and 17 as obvious over Wilford and Ayres.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art of the subject matter of the ’378 patent would have had “(a) a bachelor’s degree in computer science or electrical engineering, and four or more years of experience with networks and networking devices, or (b) a master’s degree in computer science or electrical engineering, and two or more years of experience with networks and networking devices.” Pet. 10 (citing Ex. 1105 ¶¶ 30–34). Patent Owner does not offer a proposed level of skill in its Patent Owner Response and does not address Petitioner’s assertions regarding the education or experience of an ordinarily skilled artisan at the time of the invention. See generally PO Resp. We adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579 (Fed. Cir. 1995); Oelrich, 579 F.2d at 91.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“All challenged claims require a “hardware queue.” Petitioner argues “under BRI, the term ‘hardware queue’ should be interpreted to include hardware that is configurable by software to form a queue.” Pet. 42 (citing Ex. 1105 ¶ 210). Petitioner also suggests that an alternative definition of the term could “require special-purpose hardware circuitry to control at least some portion of the queue.” Id. at 44. Patent Owner does not define explicitly “hardware queue.” Nevertheless, Patent Owner’s declarant asserts “[t]he plain and ordinary meaning of a hardware queue, is well known,” i.e., that “such a queue would be designed by a circuit designer and formed to function as a queue as part of the manufacturing process of an electronic circuit,” and that it differs from a software queue “formed by software operating on general purpose or multi-purpose hardware.” Ex. 2001 ¶ 34. Additionally, Patent Owner’s argument in the Patent Owner Response suggests “hardware queue” means that the queue cannot be a “software queue” and “must be implemented in hardware.” PO Resp. 7, 9–12 (stating “Petitioners do not assert that the queue must be implemented in hardware”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner demonstrates reasons supported by a rational underpinning for combining Wilford and Ayres, including at least that the combination uses known methods to obtain predictable results. Pet. 61–66. For example, Petitioner provides evidence and argument that: A [person of ordinary skill in the art at the time of the invention] would have understood that monitoring CPU utilization as taught in Ayres is a conventional technique for monitoring CPU load in relation to the CPU’s capacity, and that known technology could be employed in Wilford to monitor utilization of the linecard’s CPU (as Ayres does) and provide that information to the added dynamic packet flow rate control module. (Lavian, ¶259 (discussing Ayres and citing Ex. 1112 at 4:67, 9:62-65, 10:18- 20, and 10:26)). Pet. 66. We agree with and adopt Petitioner’s contentions in the Petition as to claims 5, 10, and 17.” slip op. at 36
- Strike new argumentNew argument consideredDenied
“because it contains allegedly new arguments. Paper 24. Specifically, Petitioner states Patent Owner argued for the first time “a hardware queue” requires some unspecified “structure” “define[d]” by hardware “such as shift registers.” Paper 42, 2 (citing Sur-Reply at 2–3). Petitioner also asserts that Patent Owner, for the first time in “[t]he Sur-Reply[,] offers unsupported attorney arguments about alleged differences between the ‘hardware queues’ in Exs. 1110 and 1111 and Wilford’s queues based on alleged differences between SRAM and DRAM.” Paper 42, 3 (citing Sur-Reply at 2–3). Petitioner asserts Patent Owner’s arguments could have been made in the Patent Owner Response and thus are waived. Paper 8, 3 (arguments not in POR “will be deemed waived”); Update to the Trial Practice Guide (83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Trial Practice Guide” and its accessibility through the USPTO website: https://go.usa.gov/xU7GP)) at 15 (a “sur-reply that raises a new issue or belatedly presents evidence may not be considered”; a sur-reply may “respond” to arguments “raised” in the reply but “respond … does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing.”). Petitioner’s motion is denied. Patent Owner’s reference to “shift registers” is in response to arguments in the Reply regarding the definition of hardware queue. Additionally, Patent Owner’s reference to Exhibits 1110 and 1111 are in response to Petitioner’s reference to those exhibits for the first time in its Reply.” slip op. at 37
Patent outcomesUS 6,738,378 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,738,378 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00096 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3 and 8–10 are unpatentable under § 103 over Bernstein alone and over Bernstein combined with Rubin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Thus, Dr. Jones does not disagree with Petitioner and Dr. Franzon’s assessment but, rather, offers additional exceptions and qualifications, which 4 Dr. Phillip Gibbons is Petitioner Hulu’s declarant in IPR2018-00017, and Dr. Franzon and Dr. Gibbons offer the same assessment as to the level of ordinary skill in the art, as noted by Dr. Jones. See Ex. 2012 ¶ 20. we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Franzon’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1001, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.5” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 9. Petitioner introduces 6 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims. additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1006 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1007 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)), 1015 (declaration testimony of Dr. Sylvia Hall-Ellis that Bernstein was publicly available no later than March 3, 1986), 1018 (Machine Readable Cataloging (“MARC”) record for Bernstein). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“g. Conclusion as to claims 1 and 8 In summary, we find Bernstein teaches all of the limitations of claims 1 and 8, and we also find the combination of Bernstein and Rubin teaches all of the limitations of claims 1 and 8. In addition, we find that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the invention recited in claims 1 and 8 based on Bernstein alone and based on the combined teachings of Bernstein and Rubin. We also find that a person of ordinary skill in the art would have been motivated to combine the teachings of Bernstein and Rubin. Having considered the full record developed during trial, we conclude Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 1 and 8 would have been obvious under 35 U.S.C. § 103(a) based on Bernstein alone and based on the combined teachings of Bernstein and Rubin.” slip op. at 36
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371
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.