- Intel Corporation v. Besang Inc.InstitutedPTAB · Dec 13, 2023 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1 and 13–17 on all petition grounds, finding a reasonable likelihood of success on at least one challenge to claim 13 based on combinations involving Lee or Johnson.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“stackable add-on layer” requires something more than just any type of layer that is directly or indirectly adhered to the substrate or dielectric layer. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer.” Ex. 1001, 12:29–32. Second, the written description of the ’702 patent strongly suggests that a “stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate or a dielectric layer above the that in the invention “a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” Id. at 1:47–50 (emphasis added). Likewise, the specification explains that an SOI layer refers to “a relatively thin, single crystal portion of a semiconductor wafer that can be cleaved and bonded to another previously fabricated wafer, or similar type of substrate.” Id. at 4:47–51. “In this context,” the ’702 patent explains, “the SOI layer may be thought of as an attachment layer, or stackable add-on structure which is suitable for bonding to a semiconductor substrate already containing devices and/or interconnections.” Id. at 4:53– 57. Again, this suggests that a “stackable add-on layer” is separately formed and then bonded to a previously fabricated substrate. Given the structure of the claims and the description of the invention in the written description of the ’702 patent, we preliminarily construe “stackable add-on layer” to be a layer that is formed separately from the substrate and then bonded to the substrate or a dielectric layer above the substrate. We do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate or dielectric layer without being added to a separately formed substrate. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownOther
“Independent claims 1 and 13 do not specify how the stackable add-on layer is bonded to the dielectric layer. Nor does Petitioner assert that the plain and ordinary meaning of “bonding” refers to “wafer bonding.” Thus, to limit the claims to wafer bonding, Petitioner must identify a clear expression of intent in the ’702 patent to define “bonding” as “wafer bonding,” or a clear disavowal of claim scope demonstrating that non-wafer bonding methods are outside the reach of the claims. See Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner does not contend that the patentee acted as its own lexicographer by defining “bonding” as “wafer bonding,” a term that does not even appear in the ’702 patent. Id. at 1365. Nor are we directed to any clear disavowal indicating that methods of bonding other than “wafer bonding” are outside the scope of the claims. Id. at 1366. Thus, we decline to construe “bonded” in claims 1 8 Wafer bonding is a method in which semiconductor layers are formed on separate wafers and then bonded together to create a stacked semiconductor structure. Ex. 1003 ¶ 41. that the standards for lexicography and disavowal are “exacting”). As noted by Petitioner, the ’702 patent describes an SOI layer that is wafer bonded to a previously fabricated substrate. Ex. 1001, 4:47–53. Independent claims 1 and 13, however, do not require an SOI layer, and the disclosure of a single embodiment in which wafer bonding is used is not sufficient to import such a limitation into the claims. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (“Nonetheless, this court will not countenance the importation of claim limitations from a few specification statements or figures into the claims.”). In summary, we preliminarily construe “stackable add-on layer . . . the first stackable add-on layer is/being bonded” to require a separate layer that is formed apart from the substrate and then subsequently bonded to the substrate or a dielectric layer above the substrate.9 We do not construe independent claims 1 or 13 to require any particular form or method of bonding.10” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“The evidence of record demonstrates that Petitioner and Micron jointly developed the 3D NAND technology that is generally at issue in the district court litigation, and the parties have acknowledged “their long-term joint development partnership” for this technology. Ex. 1013 (district court complaint); Ex. 2010 (“Micron and Intel Extend their Leadership in 3D NAND Flash memory.”); Ex. 2016 (discussing the end of Intel’s and Micron’s NAND partnership). There is no assertion, however, that all 3D NAND technology infringes the challenged claims of the ’702 patent, and Micron and Intel are not accused of infringing the ’702 patent based on the same products and are not co-defendants in any district court litigation. Further, Patent Owner presents no persuasive evidence that the two parties collaborated on the development of either of the accused products, as opposed to general 3D NAND technology, and Petitioner represents that the two parties filed their petitions independently and without coordination or cooperation. Prelim. Reply 1–2; Ex. 2016, 1 (noting that each company sought to independently develop 3D NAND technology in order to “forge” their own path for future NAND development and “better optimize the technology and products for their individual business needs”). relationship between Petitioner and Micron, and Petitioner is not the same petitioner as the petitioner in IPR2023-00900. Thus, General Plastic factor 1 weighs against discretionary denial.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The stipulation filed in the Texas litigation mitigates, to an extent, concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.12 Director’s Memo at 7. Similarly, Petitioner’s stipulation in the Oregon litigation (i.e., that it will not pursue an invalidity defense that the claims challenged in this IPR proceeding are invalid based on grounds that were raised or reasonably could have been raised during the IPR) also mitigates concerns of potentially conflicting decisions and duplicative efforts. Patent Owner contends Petitioner’s stipulation falls short of a Sotera stipulation by carving out any circumstance that “otherwise terminate[s] the instituted IPR.” Prelim. Sur-reply 2–3. Patent Owner interprets this carve- on the patent application publication of the Lee patent. Ex. 1007. Because the disclosures of the Lee patent and patent application publication are substantively identical, we consider the stipulation not to pursue any obviousness ground based on Lee to apply with equal force to Lee’s patent application publication. 12 The stipulation in the Texas litigation bars the defendant from pursuing “any obviousness ground that includes” Lee or Watanabe. IPR2023-00900, Exhibit 1031. Here, Petitioner’s grounds 1A–1F challenge claims 13–17 based in whole or in part on Lee, and grounds 2A–2C and 3 challenge claims 1 and 13 based on combinations of references that do not include Lee or Watanabe. Pet. 3. As such, the grounds to be resolved by the PTAB will differ somewhat from those presented in the Texas litigation. written decision, thereby rendering the stipulation an “empty promise” as the district court in the Texas litigation will undoubtedly resolve validity before a final written decision in this case. Id. at 3. We disagree. We do not understand Petitioner’s stipulation to require that a final written decision be issued before the stipulation takes effect. Rather, so long as an inter partes review is instituted, and until such time as the IPR is terminated or vacated, Petitioner will not pursue any invalidity defense before the district court that is “based on grounds that were raised or could have been raised during the IPR.” Ex. 1034. In summary, given the stipulations filed by the petitioners in the Oregon and Texas litigations, it appears that there will be minimal, if any, overlap between the issues raised in the petitions and in the parallel district court proceedings. Accordingly, Fintiv factor 4 weighs against discretionary denial.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - PTAB · Dec 7, 2023 · IPR2023-01024 · APJ Justin T Arbes · IPR · Institution
Review instituted for claims 8–17 on all asserted grounds after finding a reasonable likelihood of prevailing on the Finnegan–Begault and Shivappa–Zhou grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (‘Sotera’)], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01024 challenging the patentability of claims 8–17 of the ’836 patent, then [Petitioner] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA). Reply 1 (quoting Ex. 1141, 3); see also Exs. 2015–2017 (Patent Owner’s infringement contentions indicating that Patent Owner is asserting only claims 8 and 10 of the ’836 patent in the district court case); Ex. 2018, 2 (Petitioner’s final invalidity contentions, dated October 18, 2023, indicating the same); Ex. 1143 (Order Granting Joint Motion to Amend Scheduling Order in the district court case indicating that the deadlines to serve final infringement contentions and to amend pleadings, including to “add[] . . . patent claims,” have expired). Patent Owner concedes that Petitioner filed a “Sotera-like stipulation” but argues that it is insufficient because it “leaves the door open to a duplication of efforts and the possibility of conflicting decisions.” Sur-Reply 1 (citing Ex. 1141, 4 (“This stipulation is not intended . . . to limit [Petitioner’s] ability to assert . . . invalidity under 35 U.S.C. §§ 102 and 103 not available in IPR and under 35 U.S.C. §§ 101 and 112[], regardless of whether IPRs are instituted.”)). Namely, Patent Owner argues that Petitioner’s stipulation carves out “the right to assert overlapping system art in the parallel district court proceeding,” such that institution here would not address the risk of “inconsistent outcomes between the PTAB and the district court.” Id. at 3. We disagree with Patent Owner, as Petitioner’s stipulation comports with the “could have reasonably been raised” language of the Director’s Memo. Compare Reply 1 (stipulation not to pursue in the district court case “any ground raised or that could have been reasonably raised in” this proceeding), with Director’s Memo 3 (“stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB”). Patent Owner’s argument essentially attacks the reasoning of Sotera itself and the Director’s Memo, which we are bound to follow. Accordingly, Patent Owner’s argument is unavailing.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Based on the arguments presented in the Petition, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’836 patent challenged in the Petition. Accordingly, we institute a trial on all claims and all grounds asserted in the Petition. The Board has not made a final determination under 35 U.S.C. § 318(a) with respect to the patentability of the challenged claims.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art would have had “a Bachelor’s degree in computer science/engineering, or a related field, with coursework in computer programming, digital signal processing, spatial audio, or virtual/augmented reality, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent,” where “[a]dditional education can compensate for less experience, and vice-versa.” Pet. 4 (citing Ex. 1003 ¶¶ 45–51). Patent Owner argues that a person of ordinary skill in the art instead would have had “several years of academic and/or professional experience in a technical field relevant to digital audio signal processing, such as electrical engineering, computer engineering, or computer science; and a familiarity with relevant literature and concepts concerning virtual 3D audio processing, which were widely available at the time of disclosure.” Prelim. Resp. 5–6. Neither party explains why its proposed definition is appropriate. Based on the record presented, including our review of the ’836 patent and the types of problems and solutions described in the ’836 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1, ll. 5–18 (describing the general technology of “[t]hree-dimensional (3D) sound localization”), col. 2, l. 24–col. 3, l. 49 (describing the properties and prior uses of HRTFs), col. 5, ll. 14–57 (describing various electronic devices capable of displaying virtual reality (VR) and augmented reality (AR) images). We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.2” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree based on the current record. Limitations 8[c] and 8[e] recite, respectively, that “the display displays the image to the user at the near-field distance” and “the electronic device is located at the near-field distance from the head of the user” (emphasis added). Both refer to the same distance, finding antecedent basis in the earlier recitation of “a near-field distance” in limitation 8[a]. Thus, based on the current record, the plain language of claim 8 appears to require that (1) the image is displayed to the user at a near-field distance from the user’s head, and (2) the electronic device is located at the same distance—in other words, they are co-located. Patent Owner discusses limitations 8[a] and 8[e], but fails to account sufficiently for the language of limitation 8[c]. See id. at 11–12.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,290,836 - PTAB · Dec 6, 2023 · IPR2023-01020 · APJ Scott Raevsky · IPR · Institution
Instituted review of claims 1–20 on all grounds; the Lyren and Reif combination showed a reasonable likelihood of obviousness for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’184 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that If the PTAB institutes the pending IPR in IPR2023-01020 challenging the patentability of claims 1-20 of the ’184 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 7. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’184 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties do not propose any claim constructions. See Pet. 7; Prelim. Resp. 7. As no terms are in dispute, we determine that no terms require construction at this stage. 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 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,448,184 - PTAB · Dec 6, 2023 · IPR2023-01019 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim, including over Lyren and Reif assuming Lyren is prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’179 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022). Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[8] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that 7 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 8 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). If the PTAB institutes the pending IPR in IPR2023-01019 challenging the patentability of claims 1-20 of the ’179 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA). Prelim. Reply 1. Patent Owner concedes that Petitioner has filed a “Sotera-like stipulation” but argues that it is insufficient because it “leaves the door open to a duplication of efforts and the possibility of conflicting decisions.” Prelim. Sur-reply 1 (citing Ex. 1141, 4 (“This stipulation is not intended . . . to limit Meta’s ability to assert . . . invalidity under 35 U.S.C. §§ 102 and 103 not available in IPR and under 35 U.S.C. §§ 101 and 112[], regardless of whether IPRs are instituted.” (emphasis omitted))). Namely, Patent Owner argues that Petitioner’s stipulation carves out “the right to assert overlapping system art in the parallel district court proceeding,” such that institution here would not address the risk of “inconsistent outcomes between the PTAB and the district court.” Id. at 4. We disagree with Patent Owner, as Petitioner’s stipulation sufficiently” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner applies Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 4. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’179 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. See Pet. 6–7; Prelim. Resp. 4. We agree that no terms require construction at this stage. 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 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,368,179 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Dec 5, 2023 · IPR2023-01016 · APJ Christopher M Kaiser · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted Shim- or Fujiki-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and at least five years of experience in the field of batteries and battery materials.” Pet. 33. According to Petitioner, “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education and experience.” Id. (citing Ex. 1003 ¶¶ 83–91). On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19–20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’828 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’828 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As explained more fully below, we need not construe any claim terms to determine that Petitioner fails to show sufficiently that the prior art teaches or suggests the subject matter of the challenged claims. Thus, after considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,741,828 - Trend Micro, Inc. v. Taasera Licensing LLCInstitution deniedPTAB · Dec 1, 2023 · IPR2023-00800 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Trend Micro did not show a reasonable likelihood that claims 1–5 were unpatentable over Mukherjee and Cooper.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Having reviewed all of the parties’ arguments and evidence, we determine Petitioner does not demonstrate a reasonable likelihood of establishing unpatentability of any of claims 1–5. For the following reasons, Petitioner does not address persuasively claim 1’s recitation of “the native computing environment which includes a network analyzer, an integrity processor, an event correlation matrix, a risk correlation matrix, and a trust supervisor.” Ex. 1001, 40:1–4 (emphasis added).” slip op. at 12
- BurdenNot reached
“We agree with Patent Owner that Petitioner does not support sufficiently its position that Mukherjee discloses claim 1’s “event correlation matrix” and “risk correlation matrix.” Pet. 45–46. For example, when addressing the claimed “event correlation matrix,” Petitioner does not substantiate its position that Mukherjee describes “operation of the fourth layer of the expert model as mapping events to security issues.” Pet. 46 identify any express disclosure of Mukherjee mapping events to security issues in its fourth layer. Ex. 1005, 13; Pet. 45–46.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner does not support sufficiently its position that Mukherjee discloses claim 1’s “event correlation matrix” and “risk correlation matrix.” Pet. 45–46. For example, when addressing the claimed “event correlation matrix,” Petitioner does not substantiate its position that Mukherjee describes “operation of the fourth layer of the expert model as mapping events to security issues.” Pet. 46 identify any express disclosure of Mukherjee mapping events to security issues in its fourth layer. Ex. 1005, 13; Pet. 45–46.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner and Dr. Nielson do not show persuasively how or why Mukherjee’s discussion of performing these other actions discloses mapping events to security issues. Pet. 45–46; Ex. 1003 ¶¶ 187–188. For example, Dr. Nielson’s testimony that “[a person of ordinary skill in the art] would have known that ‘attack signatures,’ in the context of IDS, refers to patterns of behavior known to be related to attacks” does not provide sufficiently objective or logical support for his conclusion that “Mukherjee discloses ‘mapping integrity warnings to endpoint events.’” Ex. 1003 ¶ 188. Nor does Dr. Nielson’s other testimony. Id. ¶¶ 187–188.” slip op. at 14
§ 103 obviousnesscites PhillipsPatents in suitUS 8,990,948 - Trend Micro, Inc. v. Taasera Licensing LLCInstitution deniedPTAB · Dec 1, 2023 · IPR2023-00799 · APJ Neil T Powell · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been unpatentable as obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner that Petitioner has not addressed limitation 1[f] persuasively. Pet. 43–44; Prelim. Resp. 19–21. Even assuming Petitioner is correct that Miliefsky’s network-based assets list constitutes “temporal events,” as recited in claim 1, Petitioner does not persuasively address certain other aspects of the claim language. For example, Petitioner does not support sufficiently its contention that “Miliefsky teaches ‘generating . . . temporal events based at least in part on analyzing the third party network endpoint assessments.’” Pet. 44 (citing Ex. 1003 ¶¶ 198–201) (emphasis added). Petitioner cites Miliefsky’s paragraph 94, which does not expressly disclose generating the alleged temporal events (the network-based assets list) based at least in part on analyzing third party network endpoint assessments. Ex. 1006 ¶ 94; Pet. 44. According to Petitioner, however, Miliefsky discloses “configuration data collected or processed at particular time (‘temporal events’) can be combined with vulnerability assessment data and include related data, which . . . is disclosed as being sourced from third parties.” Pet. 44 (citing Ex. 1003 ¶ 201). Petitioner also argues that “internal assessments such as the generated network asset list are disclosed as being combined with external assessments to provide feedback to each other (e.g., to produce control lists).” Id. (citing Ex. 1003 ¶¶ 202–203; Ex. 1006 ¶ 94). Even if accurate, these arguments do not show sufficiently for institution that Miliefsky teaches generating temporal events based at least in arguments indicate that Miliefsky discloses combining the alleged temporal events (the network-based assets list) with third party network endpoint assessments. As Patent Owner observes, combining temporal events with endpoint assessments logically would not constitute generating the temporal events based on the endpoint assessments. Prelim. Resp. 20–21.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“patent “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics.” Pet. 10 (citing Ex. 1003 ¶ 83). Petitioner adds that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 10–11; Prelim. Resp. 11. Having considered the record, we agree with the parties that no explicit claim construction is 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))). C. GROUND 1 – ALLEGED OBVIOUSNESS OVER MUKHERJEE AND MILIEFSKY” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner that Petitioner has not persuasively addressed limitation 1[g]’s requirement for “correlating . . . the received endpoint events and the generated temporal events.” Ex. 1001, 40:6–7; Pet. 45–47. Petitioner does not provide a sufficiently persuasive, objective basis for its contention that it would have been obvious to include Miliefsky’s network-based assets list “into the correlation operations of Mukherjee.” Pet. 46 (citing Ex. 1003 ¶ 216). Petitioner argues that Mukherjee suggests such a modification in the following passage: The fourth layer of the model introduces the event in context. There are two kinds of context: temporal and spatial. As an example of temporal context, behavior which is unremarkable during standard working hours may be suspicious during off-hours [35]. The IDM, therefore, allows for the application of information about wall-clock time to the events it is considering. Wall-clock time refers to information about the time of day, weekdays versus weekends and holidays, as well as periods when an increase in activity is expected. In addition to the consideration of external temporal context, the expert system uses time windows to correlate events occurring in temporal proximity. This notion of temporal proximity implements the heuristic that a call to the UNIX who command followed closely by a login or logout is more likely to be related to an intrusion than either of those events occurring alone. Such related patterns of behavior are also referred to as attack signatures [23,24]. Ex. 1005, 13 (emphases added consistent with emphases in Petition); Pet. 45–46. Petitioner does not sufficiently support its position that this passage of Mukherjee would have suggested adding a network-based assets list into certain information, but not an assets list. Ex. 1005, 13. And, as Patent Owner notes, the only “correlat[ing]” mentioned in the cited passage is “correlat[ing] events occurring in temporal proximity.” Id.; Prelim. Resp. 21–22. Petitioner does not provide a persuasive, objective basis for its view that these disclosures suggest including Miliefsky’s network-based assets list into the process of correlating temporally proximate events. Pet. 46. Petitioner does not, for example, persuasively show for institution how or why Mukherjee’s discussion of correlating temporally proximate events and/or its reference to attack signatures allegedly would have suggested correlating Miliefsky’s network-based assets list and endpoint events. Id. Nor does Dr. Nielson’s testimony substantiate Petitioner’s argument that the cited passage of Mukherjee suggests the proposed modification. Id. (citing Ex. 1003 ¶ 216). Indeed, Dr. Nielson does not testify that Mukherjee suggests including a network-based assets list in correlation operations. E.g., Ex. 1003 ¶ 216. Moreover, Petitioner and Dr. Nielson do not otherwise sufficiently support Petitioner’s position that it would have been obvious to correlate Miliefsky’s network-based assets list and Mukherjee’s events. Pet. 46; Ex. 1003 ¶¶ 209–220. Consistent with Patent Owner’s arguments, Petitioner and Dr. Nielson do not articulate or substantiate a sufficiently persuasive reason that a person of ordinary skill in the art would have had for modifying Mukherjee to correlate Miliefsky’s network-based assets list and Mukherjee’s temporally proximate events. E.g., Pet. 45–47; Ex. 1003 ¶¶ 209–220; Prelim. Resp. 21–22. Petitioner and Dr. Nielson do not, for example, explain how or why a person of ordinary skill in the art would have” slip op. at 22
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,092,616 - Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution deniedPTAB · Nov 21, 2023 · IPR2023-00706 · APJ Neil T Powell · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been obvious over Das.
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 the associated evidence, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent “would have been a person with at least a bachelor’s degree in computer science, computer engineering, or electrical engineering or in a related field and at least three years of experience in computer network security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Both parties express that we do not need to construe any claim language explicitly. Pet. 6; Prelim. Resp. 13. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. 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))).” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner does not show sufficiently that Das teaches or would have rendered obvious the claimed use of “network endpoint assessments.” Petitioner does not substantiate its conclusory argument that Das’s network threat information constitutes the claimed “network endpoint assessments.” Pet. 21. In support of this argument, Petitioner cites Dr. Jeffay’s testimony, but that testimony is entitled to little weight because it is verbatim to Petitioner’s conclusory argument. Compare Pet. 21 with Ex. 1003 ¶ 66; Xerox Corp. v. Bytemark, IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential) (explaining that declaration testimony that “is conclusory and unsupported” and which “adds little to the conclusory assertion for which it is offered to support . . . is entitled to little weight”). Neither Petitioner nor Dr. Jeffay provides persuasive reasoning or evidence that Das’s network threat information relates to endpoints. Pet. 21–22; Ex. 1003 ¶¶ 66–67. Moreover, even if we assume Das’s network threat information somehow relates to endpoints, Petitioner and Dr. Jeffay do not provide persuasive reasoning or evidence that the information constitutes endpoint assessments, specifically. Pet. 21–22; Ex. 1003 ¶¶ 66–67.” slip op. at 18
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,092,616 - Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution deniedPTAB · Nov 21, 2023 · IPR2023-00705 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Palo Alto Networks did not show a reasonable likelihood that claims 1–5 would have been obvious over Das and Overcash.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood of establishing that independent claim 1 would have been obvious over Das and Overcash. Petitioner’s arguments and evidence regarding dependent claims 2–5 do not cure the deficiencies in Petitioner’s challenge to claim 1. Pet. 22–44. Accordingly, Petitioner does not demonstrate a reasonable likelihood of establishing obviousness of any of the challenged claims. III. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’948 patent, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’948 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM INTERPRETATION B. We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 5–6; Prelim. Resp. 10. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. 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))).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not supported sufficiently its position that Das’s reputation engine 20 constitutes both “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. The portions of Das cited by Petitioner do not disclose that reputation engine 20 is a matrix. Ex. 1006 ¶¶ 18, 23–24, 48, 55, 58; Pet. 12–15. And Petitioner does not provide sufficiently persuasive, objective support for its contention that an engine constitutes a matrix. Pet. 14–15 (citing Ex. 1006 ¶ 55; Ex. 1003 ¶¶ 57–58). To the extent Petitioner implies that reputation engine 20 is a matrix because it correlates and otherwise processes information when generating and modifying reputation scores, Petitioner does not explain persuasively why performing 4 The Preliminary Response cites “Ex. 2002, 8-10,” but this appears to be a typographical error, as Exhibit 2003 is the parties’ district court Joint Claim Construction and Prehearing Statement. those actions would make an engine a matrix. Id. Indeed, in tension with Petitioner’s conclusory position that an engine is a matrix, the ’948 patent discloses using more than one “correlation matrix,” in addition to a “correlation engine,” suggesting that an engine is not a matrix. Ex. 1001, 15:14–19 (“event correlation matrix 633”), 15:38–41 (“risk correlation matrix 411”), 15:29–35 (“system event correlator 410 can be implemented as a correlation engine”). Moreover, even if Petitioner had persuasively supported its position that an engine is a matrix, Petitioner does not provide sufficiently persuasive, objective support for its contention that Das’s single reputation engine 20 constitutes two matrices. Id. For the foregoing reasons, Petitioner does not provide persuasive arguments and evidence that the cited prior art teaches or suggests “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. Nor does Petitioner provide persuasive arguments and evidence that this claim limitation otherwise would have been obvious over the cited prior art, as Petitioner does not argue, much less substantiate, that it would have been obvious to modify the prior art’s disclosures to use “an event correlation matrix” and “a risk correlation matrix.” See, e.g., Pet. 12–15.” slip op. at 16
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,990,948 - Palo Alto Networks, Inc. v. BT Americas Inc.Institution deniedPTAB · Nov 17, 2023 · IPR2023-00888 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution on all grounds because the petition did not show a reasonable likelihood that any of claims 1–42 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined 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; see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assocs. and citation omitted). Additionally, preamble language that merely states the purpose or intended use of an invention generally is not treated as limiting the scope of a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Our reviewing court has explained, however, that a “conclusion that some preamble language is limiting does not imply that other preamble language, or the entire preamble, is limiting.” Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020); see TomTom, Inc. v. Adolph, 790 F.3d 1315, 1322-23 (Fed. Cir. 2015) (holding the court erred in determining that it had to construe the entire preamble if it construed a portion of it), citing Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed. Cir. 1985), overruled in part on other grounds by Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1068 (Fed. Cir. 1998) (en banc in part). The Court in Cochlear Bone Anchored specifically held that even when a phrase in a preamble provides a necessary structure for a claim, that preamble structure does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention. 958 F.3d at 1355. Based on the current record, we find at least part of the preamble limiting because (1) the claim limitation relating to “probe,” relies on the preamble for antecedent basis. Accordingly, we find at least this portion of and is limiting. We need not reach a determination on whether the entirety of the preamble is limiting because at this stage of the proceeding, we are satisfied Petitioner has shown that Duvall in combination with the teachings of Chu would have render the preamble obvious to a person of ordinary skill in the art at the critical time.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that limitation b) requires a filtering process that produces the claimed residue from the filtering, followed by an analysis of the post-filtering residue. We also agree that the filtering and analysis is performed on status data. Nonetheless, as discussed in detail below, we find Duvall teaches the disputed limitation even under Patent Owner’s construction. We do not construe any other limitations or terms of the challenged claims because construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, Petitioner asserts a person of ordinary skill in the art at the time of the ’237 patent, “would have had a B.S. degree in Computer Science, Computer Engineering, or an equivalent field, as well as at least 2–3 years of academic or industry experience in the design, analysis, and monitoring of computer networks, including issues of network security and network administration, or comparable industry experience.” Pet. 12 (citing Ex. 1003 ¶¶ 61–62). Patent Owner does not assert a different level of skill in the art at the time of the alleged invention at this time. Prelim. Resp. 28. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’237 Patent and the prior art of record, except that we eliminate vagueness as to the stated amount of academic or industry experience.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,159,237
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.