- PTAB · Apr 14, 2023 · IPR2022-01489 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Claim 1 – Conclusion For these reasons, Petitioner has demonstrated a reasonable likelihood of proving that claim 1 would have been obvious over the proposed combination of Lairson and Erdogan, and over the proposed combination of Lairson and Tsai-133.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner contends that this is a typographical error and “wherein” was intended. Prelim. Resp. 8 n.2. Petitioner asserts that “each of the challenges presented in this Petition” addresses “adding a third set of layers with oxygen on a second side of a substrate.” Pet. 8. Because we find Petitioner’s contentions to be sufficient for institution even under Patent Owner’s proposed construction, we need not address Patent Owner’s proposed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We also conclude that no express claim construction is necessary for any other claim terms. See id.” slip op. at 12
- Skill levelSkill level board ownOther
“Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ794 patent, we apply a slightly modified 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.”. On this record and for the purposes of institution, we determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“However, Patent Owner’s arguments regarding the combination are directed towards a bodily incorporation of structures described in the references, rather than the combination of their teachings proposed by Petitioner. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Given the teachings in each reference and our direction that an ordinarily skilled artisan is a person of ordinary creativity, we find, on this preliminary record, that Petitioner has adequately shown that an ordinarily skilled artisan would have applied Lairson’s teachings regarding a short-pass filter with Erdogan or Tsai-133’s teachings concerning filter layers on both sides of a substrate used to form a bandpass filter. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Petitioner’s proposed combination does not involve adding the exact layers taught in Erdogan and Tsai-133 on the second side of the substrate to Lairson’s short-pass filter on the first side of the substrate. Pet. 33–34, 36– 39. Rather, Petitioner proposes, in one example, using the same materials for filter stacks on both sides of the substrate. Id. at 37–38. Thus, Patent Owner’s arguments that adding the second-side layers disclosed in Erdogan and Tsai-133 to the first-side layers of Lairson is not responsive to Petitioner’s proposed combination. Additionally, on the present record, we credit Petitioner’s declarant’s uncontroverted testimony that Lairson does not explicitly describe a bandpass filter with a long pass filter, and thus that one of ordinary skill would have looked to Erdogan and Tsai-133 for the technique of using a long-pass filter on the other side of the substrate. Id. at 34–37 (citing Ex. 1002 ¶¶ 152, 158). On the present record, and for the purposes of institution, Petitioner sufficiently shows that the combination of Lairson and either Erdogan and Tsai-133 teaches a near infrared band pass filter comprising a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen, and a second set of layers on the first side, wherein the second set of layers includes oxygen. Additionally, on the present record and for the purposes of institution, Petitioner sufficiently sets forth its showing with respect to the motivation to combine the teachings of Lairson with those of Erdogan or Tsai-133 as it proposes.” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,131,794 - Go1 Pty, Ltd. v. Opensesame, Inc.InstitutedPTAB · Feb 27, 2023 · IPR2022-01439 · APJ Stacy B Margolies · IPR · Institution
The Board instituted IPR on all challenged claims, 1–16, finding a reasonable likelihood they are unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary Response, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’113 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner states that it “generally agrees with Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 11. Patent Owner adds that “the level of ordinary skill in the art is more often premised not upon obtaining a formal degree in computer engineering, computer science, etc., but through years of hands-on experience in the field, often coupled with formal coursework that may or may not lead to a degree in the enumerated fields.” Id. (citing, e.g., Ex. 2001 ¶ 49). We determine on the current record that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art, and we therefore adopt that level for the purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express constructions for any claim terms. See Pet. 8 (“To resolve the particular grounds presented in this Petition, Petitioner does not believe that any term requires explicit construction.”); Prelim. Resp. 11 (“Patent Owner believes that the patent claims at issue can be interpreted without the need for the formal construction of any claim terms.”). We determine that no claim terms require express construction in order to determine whether to institute inter partes review.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner sufficiently shows that, in implementing Sperle’s teachings, a person of ordinary skill in the art would have considered Madison, given its disclosure of a similar system architecture and similar goals and benefits. Pet. 16–18; Ex. 1002 ¶¶ 76–83. Petitioner also sufficiently shows that an ordinarily skilled artisan would have been motivated to combine Madison’s teachings with Sperle’s teachings to provide improved access to content, improved authorization of users, an improved licensing system, and robust reporting. Ex. 1006 ¶ 6 (explaining as background that “a need exists for an improved system and method for controlling access to digital content, particularly streaming media content, and authorizing end users”); Ex. 1005 ¶ 11 (disclosing that “learning management system 140 often offers robust reporting capabilities”); Ex. 1002 ¶ 82. Petitioner also sufficiently shows that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the basic e-learning teachings of Sperle with the controlled content delivery system taught by Madison. Pet. 20–21; Ex. 1002 ¶¶ 83–86. Such a combination would have included (i) applying the access and license control software teachings of Madison to Sperle’s teachings regarding reporting module 214; and (ii) adding the browser-based content-accessing features of Madison into the similar browser-based user systems of Sperle. Pet. 20–21; Ex. 1002 ¶¶ 83–84. An ordinarily skilled artisan would have had a reasonable expectation of success because Sperle and Madison purport to solve controlled e-learning content delivery systems in similar ways and propose solutions using the same type of hardware and software with similar functionalities. Pet. 20–21; Ex. 1002 ¶¶ 85–86.” slip op. at 30
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,784,113 - Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01184 · APJ Debra K Stephens · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“8. Conclusion Based on the record before us, we determine Petitioner’s proffered arguments, evidence, and supporting testimony fails to establish a reasonable likelihood that Petitioner would prevail in showing that claims 1–7, 9, 10, 12–14, 17, 18, 20–23, 27, 30, and 31 would have been obvious over Pilgrim, Gibbons, Lairson, and Yoda.” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“II. ANALYSIS A. Discretionary Denial – 35 U.S.C. § 314(a) Patent Owner argues that we should exercise discretion to deny institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution (Prelim. Resp. 49–54). Petitioner argues we should not discretionarily deny institution under Fintiv (Pet. 66–67). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. Discretionary Denial – 35 U.S.C. §325(d) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 325(d) because of the Petition’s “reliance upon the secondary references Gibbons, Lairson, and Yoda. Gibbons and Lairson were considered by the Examiner, and Yoda does not contain any meaningful additional disclosure or basis for unpatentability that was not considered by the Examiner” (Prelim. Resp. 21–22). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged in those grounds would have been obvious as discussed below, we do not reach this issue.” slip op. at 9
- Skill levelSkill level board ownOther
“Based on the present record including the disclosure in the ʼ269 Patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements (see Pet. 6). More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ269 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,588,269 - Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01281 · APJ Sharon Fenick · IPR · Institution
Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–3, 6–11, 13–17, and 19 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution. Prelim. Resp. 43–47. Petitioner argues we should not discretionarily deny institution under Fintiv. Pet. 58–59; Paper 9. 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Petitioner uses the pre-AIA statutory framework in its analysis. Pet. 1 n.1. Patent Owner does not comment on this. The ’794 patent claims priority to a provisional filed before March 16, 2013, the effective date of the applicable AIA amendments. Thus, we refer to the pre-AIA version of 35 U.S.C. § 103. Our decision would be the same were we to apply the AIA version of the statute. Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8
- Skill levelSkill level board ownOther
“Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ526 patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements. More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with 3 In the present record, neither party presents arguments or evidence relating to secondary considerations. five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts the term “center wavelength” (recited in claims 8, 9, and 17) should be interpreted as “the average of the two half-power wavelengths (i.e., [full width half maximum]) in a passband.” Pet. 15 (citing Ex. 1001, 7:53–56, 9:1–4, FIGS. 7D, 8C, 9B; Ex. 1037, 5; Ex. 1039 ¶ 47). Petitioner asserts the term “passband” (recited in claim 14) should be interpreted as “a wavelength range within which a signal can pass through a filter and outside of which the signal is blocked,” as per Patent Owner’s construction Id. (citing Ex. 1037, 12–15). Patent Owner does not directly address Petitioner’s proposed interpretations or provide its own constructions for any claim term. See generally Prelim. Resp. Having considered the record, we conclude that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). E. Claims 1, 2, 3, 6, and 8 – Obviousness over Pilgrim, Yoda, and Thelen” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,131,794 - Configit A/S v. Versata Development Group, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13
Patent outcomesUS 6,836,766 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,836,766 - Darfon Electronics Corp. v. Michael ShipmanInstitution deniedPTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution
The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2
Discretionary denialPatents in suitUS 10,942,581 - PTAB · Oct 7, 2022 · IPR2022-00793 · APJ Debra K Stephens · IPR · Institution
Instituted IPR on claims 1–5, 8, 11, 12, 14, 15, 27, and 28 for both § 103 grounds based on Muthukumarasamy alone and with Hayward.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. (Interim Procedure 3, 9). Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. (Pet. Reply to POPR 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18‒19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original)). Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Preliminary Determination Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a “person of skill in the art (‘POSA’) would have had at least a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (Pet. 12 (citing Ex. 1005 ¶¶ 45–49)). Petitioner further asserts “[w]ith more education, for example, postgraduate degrees and/or study, less more experience can substitute for formal education” (id.). Patent Owner does not dispute Petitioner’s assertion (see Prelim. Resp. 24). Based on the present record including the disclosure in the ʼ528 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 12) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that we “need not construe any claims” to resolve this controversy and that it “adopts” Patent Owner’s “proposed plain and ordinary meaning for all terms [from] the parallel district court action” (Pet. 12–13 (citing Ex. 1005 ¶ 50; Ex. 1014)). Patent Owner does not assert any particular claim construction at this stage in the proceeding (Prelim. Resp. 24). On this record, we determine that no terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,782,528 - PTAB · Oct 7, 2022 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR on claims 1, 2, and 6–8 for both asserted obviousness grounds: Muthukumarasamy alone and Muthukumarasamy with Hayward.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Interim Procedure 9. Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. Paper 7 at 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, on the record before us, we are persuaded that the Petition establishes a reasonable likelihood that Petitioner would prevail in showing that at least one claim of the ʼ289 Patent is unpatentable. IV. ORDER For the reasons given, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes is instituted on all the challenged claims with respect to all grounds set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ’289 Patent is instituted commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is given of the institution of a trial.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertion. See Prelim. Resp. 21. Based on the present record including the disclosure in the ʼ289 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 14) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that we “need not construe any claims to resolve [this] controversy” and that it “adopts” Patent Owner’s “proposed plain and ordinary meaning for all terms [from] the parallel district court action.” Pet. 14–15 (citing Ex. 1014). Patent Owner does not assert any particular claim construction at this stage in the proceeding. Prelim. Resp. 21. On this record, we determine that no terms or phrases in the claims require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,904,289 - PTAB · Sep 30, 2022 · IPR2022-00795 · APJ Debra K Stephens · IPR · Institution
The Board instituted inter partes review on claims 1, 2, and 5–9 under both §103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition (Interim Procedure 3, 9). Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. (Pet. Reply to POPR 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18‒19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original)). Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the present record including the disclosure in the ʼ251 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 13) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d art)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On this record, we determine that no terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“particular media player for playing the video content,” as recited in claim 1 (Pet. 34–41). On the record before us, we determine Petitioner supports that combination with adequate rationale, including that the combination “facilitate[s] the source-agnostic presentation of internet content” and “facilitate[s] presentation of internet content at the display device using any number of media players through embedded media player pages” (id. at 40 (citing Ex. 1005 ¶ 102); see id. 15–18). Accordingly, based on the record before us, Petitioner has shown sufficiently that the combination of Muthukumarasamy and Hayward teaches or suggests “receiving, in the server system, one or more signals from the personal computing device, the one or more signals . . . identifying a particular media player for playing the video content,” as recited in claim 1.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,356,251 - PTAB · Apr 19, 2022 · IPR2022-00035 · APJ Debra K Stephens · IPR · Institution
The Board instituted inter partes review of claim 1 on both § 103 grounds, finding a reasonable likelihood that Petitioner would show the claim unpatentable over each asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Pet. 11). Generally, Patent Owner contends that the Petition should be denied (see Prelim. Resp.). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) in July 2003 would have had a working knowledge of the network communications art that is pertinent to the ’066 Patent, including network security. A POSITA would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications. Lack of professional experience can be remedied by additional education, and vice versa (Pet. 9 (citing Ex. 1003 ¶¶ 17–19)). Patent Owner agrees with Petitioner’s assertion and further asserts a “higher level of education (e.g., a Master’s degree) may make up for less work experience, and additional work experience may make up for less education” (Prelim. Resp. 14 (citing Ex. 2001 ¶¶ 14–22)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Patent Owner’s construction. Patent Owner’s arguments ignore significant claim language of claim 1 that contradicts Patent Owner’s proposed construction, instead focusing on tying to equate broad, ordinary terms — “utilization” with “applying” and “across” with “to” (see id. at 16–21). In particular, Patent Owner ignores the portion of the limitation which recites “cause utilization of different occurrence mitigation actions of diverse occurrence mitigation types, including a firewall-based occurrence mitigation type and a other occurrence mitigation type, across the plurality of devices” (emphasis added). To aid in understanding the meaning of “a firewall-based occurrence mitigation type,” we turn to the disclosure of the ’066 Patent (see Ex. 1001). The ’066 Patent includes a detailed disclosure which contradicts Patent Owner’s argument that the limitation at issue excludes mitigation actions of a network defense system providing firewall functionality.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“intrusion functionality 116 detects . . .an attempt from outside the network 14 to exploit [a] noted vulnerability (for example, a certain IP address is noted as being a source of traffic relating to the IIS buffer overflow vulnerability as detected by the code red signature)” (Ex. 1005, 14:59–64; see Pet. 37). Willebeek-LeMair further teaches, in step 312, “[t]his is reported back to the agent 126” which “responds in step 314 by reporting . . . that an attempt to exploit has occurred” (Ex. 1005 14:64–67; see Pet. 37). Willebeek-LeMair discloses the agent 126 additionally “instructs the firewalling functionality 118 in step 316 to drop the packet traffic relating to the attempted exploitation” and “in step 318 instruct[s] the firewall to block all traffic originating from the noted IP address of the attacker” (Ex. 1005 14:67–15:6, 1:7–10; see Pet. 37). Thus, because Willebeek-LeMair discloses a firewalling functionality, at this juncture, we determine Willebeek-LeMair teaches the recited “firewall-based occurrence mitigation type.” Additionally, because Willebeek-LeMair discloses instructing the firewall to block all traffic from the attacker (an occurrence mitigation action), based on the record before us, we determine Willebeek-LeMair teaches the recited “firewall-based occurrence mitigation type,” as recited in claim 1. and specifically, “a terminate action [ ] taken by the intrusion detector functionality 116 to terminate any session associated with a possible attack” (Ex. 1005, 12:40–43; see Pet. 38). Willebeek-LeMair also teaches the intrusion detector functionality generates alerts from its analysis of the network traffic content (Ex. 1005, 9:34–27, 1:7–10; see Pet. 38). Based on the record before us, we determine this intrusion detector functionality is an occurrence mitigation action that is different than the firewall-based occurrence mitigation type. Accordingly, based on the record before us, we determine Willebeek-LeMair teaches the recited “a other occurrence mitigation type,” as recited in claim 1. In combination of these two functionalities, we determine on the current record, Willebeek-LeMair teaches the recited “cause utilization of different occurrence mitigation actions of diverse occurrence mitigation types, including a firewall-base occurrence mitigation type and a other occurrence mitigation type” (see Pet. 38 (citing Ex. 1003 ¶ 97)).” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,893,066
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.