- Apple Inc. v. Smart Mobile Technologies LLCSome claims unpatentablePTAB · Jun 3, 2026 · IPR2022-00981 · APJ Jameson Lee · IPR · Remand
On remand, claims 8–11, 13, 17, and 19 were held unpatentable over Rautiola, Regnier, and Sainton; claim 15 was not shown unpatentable.
RulingsRemand decision- RemandMixed
“8–11, 13, 15, 17, and 19, and remanded “for consideration of the patentability of those claims.” Id. at 14. We understand both the reversal and vacature are with respect to Ground 1 of alleged unpatentability, not Ground 2, because the Federal Circuit’s decision did not discuss anything relating to Ground 2. Paper 43. The parties agreed. Paper 44. In this remand proceeding, neither party requested the filing of additional briefing or evidence. In a telephone conference call, both parties expressed agreement with the Board (1) that “there is no issue regarding collateral estoppel or issue preclusion with respect to dependent claims 8– 11, 13, 15, 17, and 19, and (2) that the remand proceeding would not involve the Board revisiting any matter or issue concerning alleged obviousness of claims 1, 8, 9, 11, 13, 17, and 19 over Ground 2.4 Papers 43, 44. The parties also agreed that the remand proceeding would only involve the Board reviewing the alleged obviousness of dependent claims 8–11, 13, 15, 17, and 19 as obvious over Rautiola, Regnier, and Sainton. Id. We have authority to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. On the record before us, which is the same as the record before us at the time we issued the first final written decision (Paper 34), we determine that Petitioner has proved by a preponderance of the evidence that claims 8– 11, 13, 17, and 19, but not claim 15, of the ’936 patent are unpatentable over Rautiola, Regnier, and Sainton.” slip op. at 3
- Expert testimonyPetitioner expert creditedDecided for patent owner
“5. Petitioner’s Request to Discredit Dr. Cooklev’s Declaration Petitioner makes several arguments discrediting Dr. Cooklev’s declaration (Ex. 2031) and asserts that Dr. Cooklev’s declaration should be accorded little to no weight. Reply 13–14. We have already considered and rejected this request in the Final Written Decision issued on November 7, 2023. Paper 34, 21–23. Our reasoning need not be reiterated here. Petitioner does not persuade us that Dr. Cooklev’s declaration testimony should be accorded little to no weight.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petition’s definition of level of ordinary skill. See generally PO Resp. Patent Owner’s expert, Dr. Cooklev, accepts Dr. Kotzin’s proposed level of ordinary skill in the art. Ex. 2031 ¶ 24. We adopt Petitioner’s proposal regarding the level of ordinary skill in the art. This level of ordinary skill in the art is supported by the testimony of Dr. Kotzin (Ex. 1003 ¶¶ 20–22) and is consistent with the level reflected in the ’936 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). A prior art reference constitutes analogous art if it is “from the same field of endeavor” or “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023).” slip op. at 16
Patent outcomesUS 8,472,936 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,936 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2025-00749 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–4 and 8–13 are unpatentable as obvious over Gallagher and Schofield; claims 5–7 and 14–16 were not shown unpatentable on the asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As a general rule, unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one.” Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation modified). “However, a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Id. (cleaned up). “[O]rdinarily in process claims steps taken concurrently are the equivalent of steps taken successively.” In re White, 39 F.2d 974, 975 (CCPA 1930); see also Cybersettle, 243 F. App’x. at 609 (finding “the step of calculating the differences between demands and offers can occur concurrently with the [next enumerated step of] receipt of multiple demands and offers” and “the testing step of ‘determining whether any of the differences fall within the predetermined settlement range’ may occur concurrently with the receipt and comparison of the bids” (citation modified)). This is especially true here, given that the recitations at issue are functional language in an apparatus (system) claim. We further agree with Petitioner that the ’328 patent discloses such concurrent performance of these steps: Either concurrent with or subsequent to the identification of road signs 30 and generation of asset management database 24, the computer processor 22 evaluates that portion 32 of each video frame or image that depicts a road sign 30 to determine a set of color values 40, 42 for each of a plurality of colors on the road sign 32. A retroreflectivity value is generated for each color portion 34, 36 on each frame of the tagged videostream 20 containing the road sign 30 that represents a different color value 40, 42. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner is correct to the extent that it need not show that “the features of [Schofield] may be bodily incorporated into the structure of [Gallagher],” but Petitioner must prove that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting, 825 F.3d at 1381. For claim 9, Petitioner proposes to modify Gallagher’s system to use “Schofield’s determination of a light source’s location within a field of view” in Gallagher’s system. Pet. 23. Thus, Petitioner’s combination does not require the combination of Gallagher’s and Schofield’s sensors into a single system, and Patent Owner’s “sensor fusion” argument is inapposite. See Tr. 48:8–49:6 (Patent Owner’s counsel confirming that the problem of “sensor fusion” stems from combining disparate sensors in a single system). As noted above, Schofield teaches considering the relative location of the light source in determining whether the light source is from headlights or taillights (that is, an object of interest). See Ex. 1006, 9:26–35. We are persuaded that an ordinarily skilled artisan would be motivated to use this teaching in Gallagher’s device to help distinguish between road markers that are arranged side-by-side and have a reasonable expectation of success in doing so. See Ex. 1005 ¶ 40; Ex. 1003 ¶¶ 77 (“[An ordinarily skilled artisan] would have seen Schofield’s determination of a light source’s location within the field of view as advantageous because it would have allowed Gallagher’s computer to associate the measured reflectance level with the appropriate road marker.”), 79 (“[I]mplementing this determination would have required [an ordinarily skilled artisan] to implement only conventional techniques of image processing (identifying a location of a particular pixel within an array), which was well known by [an ordinarily skilled artisan], to predictably yield the result of the location within a field of view indicating an intensity value associated with a road marker. Given that Schofield and Gallagher disclose similar types of arrays, this combination would have merely required the use of Schofield’s known technique to improve Gallagher’s similar device in the same way.”).” slip op. at 30
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)).” slip op. at 49
Patent outcomesUS 9,671,328 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,671,328 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01111 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–4 and 8–13 are unpatentable as obvious over Gallagher and Schofield; claims 5–7 and 14–16 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“As a general rule, unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one.” Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation modified). “However, a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Id. (cleaned up). “[O]rdinarily in process claims steps taken concurrently are the equivalent of steps taken successively.” In re White, 39 F.2d 974, 975 (CCPA 1930); see also Cybersettle, 243 F. App’x. at 609 (finding “the step of calculating the differences between demands and offers can occur concurrently with the [next enumerated step of] receipt of multiple demands and offers” and “the testing step of ‘determining whether any of the differences fall within the predetermined settlement range’ may occur concurrently with the receipt and comparison of the bids” (citation modified)). This is especially true here, given that the recitations at issue are functional language in an apparatus (system) claim. We further agree with Petitioner that the ’328 patent discloses such concurrent performance of these steps: Either concurrent with or subsequent to the identification of road signs 30 and generation of asset management database 24, the computer processor 22 evaluates that portion 32 of each video frame or image that depicts a road sign 30 to determine a set of color values 40, 42 for each of a plurality of colors on the road sign 32. A retroreflectivity value is generated for each color portion 34, 36 on each frame of the tagged videostream 20 containing the road sign 30 that represents a different color value 40, 42. Ex. 1001, 5:52–60. Thus, the ’328 patent discloses concurrently detecting objects of interest (road signs) and determining whether the object of interest has a particular color value. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner is correct to the extent that it need not show that “the features of [Schofield] may be bodily incorporated into the structure of [Gallagher],” but Petitioner must prove that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting, 825 F.3d at 1381. For claim 9, Petitioner proposes to modify Gallagher’s system to use “Schofield’s determination of a light source’s location within a field of view” in Gallagher’s system. Pet. 23. Thus, Petitioner’s combination does not require the combination of Gallagher’s and Schofield’s sensors into a single system, and Patent Owner’s “sensor fusion” argument is inapposite. See Tr. 48:8–49:6 (Patent Owner’s counsel confirming that the problem of “sensor fusion” stems from combining disparate sensors in a single system). As noted above, Schofield teaches considering the relative location of the light source in determining whether the light source is from headlights or taillights (that is, an object of interest). See Ex. 1006, 9:26–35. We are persuaded that an ordinarily skilled artisan would be motivated to use this teaching in Gallagher’s device to help distinguish between road markers that are arranged side-by-side and have a reasonable expectation of success in doing so. See Ex. 1005 ¶ 40; Ex. 1003 ¶¶ 77 (“[An ordinarily skilled artisan] would have seen Schofield’s determination of a light source’s location within the field of view as advantageous because it would have allowed Gallagher’s computer to associate the measured reflectance level with the appropriate road marker.”), 79 (“[I]mplementing this determination would have required [an ordinarily skilled artisan] to implement only conventional techniques of image processing (identifying a location of a particular pixel within an array), which was well known by [an ordinarily skilled artisan], to predictably yield the result of the location within a field of view indicating an intensity value associated with a road marker. Given that Schofield and Gallagher disclose similar types of arrays, this combination would have merely required the use of Schofield’s known technique to improve Gallagher’s similar device in the same way.”).” slip op. at 30
- Expert testimonyPatent owner expert discountedOther
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
Patent outcomesUS 9,671,328 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,671,328 - Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Jan 6, 2025 · IPR2023-01169 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1, 2, and 4–20 are unpatentable over Thomas; claim 3 is not shown unpatentable. Substitute claims 22–36 are unpatentable, and substitute claim 21 is not reached.
RulingsFinal written decision- BurdenFwd mixedMixed
“g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“with the computer program 110.” Ex. 1005, 3:54–55. Thomas describes that (1) the “collected data is then stored in the database 130,” (2) the collected “data is stored in a data structure, generally referred to as a user’s profile,” and (3) the collected “data is logically linked to an event, or situation, that initiated the user’s input.” Id. at 3:56–61. Thomas describes creating or establishing a user profile by simulator 120 recording “the user’s decision/input” and storing “the user’s input in the field or sub-profile associated with the particular situation and/or event.” Id. at 4:67–5:5, Fig. 6. Patent Owner does not dispute Petitioner’s showing for element [1.3]. Also, contrary to Patent Owner’s arguments, we must consider what Thomas discloses rather than whether Thomas uses the exact claim term “instruction sets.” Cf. Gleave, 560 F.3d at 1334 (a reference does not have to satisfy an ipsis verbis test to disclose a claimed element). For these reasons, we are not persuaded by Patent Owner’s argument that Thomas does not “mention instruction sets” or “anything related to an instruction set.” PO Resp. 36–37; PO Sur-reply 17.” slip op. at 42
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“C. Indefiniteness Petitioner argues that proposed substitute claims 22–36 are indefinite.” slip op. at 72
Patent outcomesUS 10,607,134 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 10,607,134 - Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Jan 3, 2025 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–9, 11–14, 16–24, 26, 28, 29, and 31–34 are unpatentable as anticipated by Grotmol; claim 15 was not shown unpatentable because Grotmol does not disclose its required sequence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 4–5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties appear to agree that the term “connection” refers to a relationship, but dispute whether it includes a link. PO Resp. 7; Pet. Reply 23. We need not resolve this claim construction issue in order to resolve the parties’ disputes about the asserted ground of unpatentability. Specifically, as discussed below, even if we assume for the purposes of this Decision that the term “connection” means a “relationship that includes a link,” the asserted prior art still discloses the disputed claim limitation. See Section II.D.23.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that claim 15 requires modifying the first instruction set before determining the modified first instruction set based on an at least partial match between the new digital picture and the first digital picture. Claim 15 recites “modifying: the first one or more instruction sets” and “determining the modified the first one or more instruction sets . . . based on the at least partial match between the new one or more digital pictures and the first one or more digital pictures.” Ex. 1001, 162:65–163:15 (emphasis added). The phrase “the modified . . . instruction sets” in the determining limitation indicates an order because it refers back to the instruction sets modified in the modifying limitation. Id. Further, the phrase “based on the at least partial match” indicates that a partial match between the new picture and the first picture returns the modified first instruction set. Id. In order for a partial match to return the modified first instruction set, it is logical that the first instruction set previously was modified and correlated to the first picture. Id. Thus, claim 15 indicates that the modifying limitation is performed before the determining limitation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (“First, we look to the claim language to determine if, as a matter of logic or grammar, [the recited steps] must be performed in the order written.”).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“3. Means-plus-function limitations Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4 (citing Ex. 1001, 16:8–60). Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 11. We adopt Petitioner’s proposed construction for purposes of this Decision. D. Anticipation of Claims 1–9, 11–24, 26, 28, 29, and 31–34 by Grotmol Petitioner argues that claims 1–9, 11–24, 26, 28, 29, and 31–34 are” slip op. at 10
Patent outcomesUS 11,055,583 mixedClaim construction§ 102 anticipationPatents in suitUS 11,055,583 - Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Dec 12, 2024 · IPR2023-01054 · APJ Russell E Cass · IPR · Final written decision
Claims 4 and 11 are unpatentable over Grotmol and Hickman; claims 5 and 7 are not shown unpatentable. Substitute claims 21 and 24–26 are unpatentable; claims 22 and 23 are not reached.
RulingsFinal written decision- 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, 3 Patent Owner does not present objective evidence of nonobviousness in this proceeding. would have [had] at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 4 (citing Ex. 1002 ¶¶ 40–42). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 6. Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, except as noted above, we adopt Petitioner’s assessment” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “connection” Claim 7 recites, in pertinent part, that “a first connection is generated” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“c) Conclusion—Claim 7 After consideration of the contentions and the evidence of record, we” slip op. at 52
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“7 We recognize that our conclusion here differs from the preliminary determination made in our Preliminary Guidance. After considering the full trial record, including Patent Owner’s MTA Reply, Petitioner’s MTA Sur-reply, Patent Owner’s Sur-sur-reply, and the arguments made at the oral hearing, we find that Petitioner has satisfied its burden of showing that this claim limitation would have been obvious over the Grotmol-Hickman combination. When issuing our Preliminary Guidance, we emphasized that the views expressed therein were “preliminary,” “subject to change upon consideration of the complete record,” and “not binding on the Board when reaching a final written decision.” See Prelim. Guid. 3.” slip op. at 99
Patent outcomesUS 10,452,974 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,452,974 - Sonos, Inc. v. Google LLCSome claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00806 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–3, 5, 9–12, and 15–18 are unpatentable as obvious over either Roberts and Asokan or Suumäki; claims 6–8 and 19 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Schmidt’s testimony, has proposed that a person of ordinary skill in the art at the time of the invention “would have had a degree in computer engineering, computer science, or a similar discipline, along with 2 years of professional experience in the fields of networking and network-based systems or applications, or an equivalent level of skill, knowledge, and experience,” and would have been “aware of and generally knowledgeable about how devices were provisioned onto wireless networks, along with standards applicable to well-known methods for communication such as Wi-Fi, Bluetooth, and NFC available at the time the ’615 patent was filed.” Pet. 18 (citing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp.; PO Sur-reply. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we considered the assertions of Petitioner that the terms of the ’615 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning. Dec. to Inst. 7 (citing Pet. 14; Ex. 1003 ¶¶ 79–82). Patent Owner also does not assert any express constructions. See generally PO Resp.; PO Sur-reply. Given the lack of controversy, we need not explicitly adopt or discuss any explicit constructions in this decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9
- BurdenMixed
“that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner’s argument. Although Petitioner is correct that Roberts discloses different embodiments for conveying configuration information, those embodiments are distinct. See Ex. 1004, that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 20
Patent outcomesUS 11,050,615 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,050,615 - Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCSome claims unpatentablePTAB · Aug 5, 2024 · IPR2023-01353 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–4, 6–11, and 13–20 are unpatentable as obvious over Sourcefire and Emerging Threats; claims 5 and 12 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Staniford’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and four years of industry experience,” and “would have had a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 16 (citing Ex. 1003 ¶¶ 23, 25). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“We largely agree with Patent Owner that there is no explicit claim- construction dispute. We address Patent Owner’s issues of what ordinarily skilled artisans would have considered in creating and implementing packetfiltering rules in the discussion below. The preservation of the flow of normal legitimate network traffic without disruption is one aspect that those with a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks would have considered. Nonetheless, overall, we determine that the plain and ordinary meaning of “configured to prevent an exfiltration operation,” does not require preventing all exfiltrations from occurring, nor allowing all non-exfiltration traffic, and that we need not consider the preservation of the flow of normal legitimate network traffic without disruption in the context of that claim construction. We determine that no claim terms need to be construed expressly for purposes of this Decision.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with Petitioner. The identified aspects of Emerging Threats website would have allowed interested parties to locate the rule sets, download the rule sets and make determinations regarding what rule to use in a packet-handling system, such as Sourcefire. Emerging Threats need not be indexed or broadly searchable under Petitioner’s theory of the ground of unpatentability, namely that Emerging Threats was known, one of ordinary skill in the art would have gone to Emerging Threats, and downloaded the emerging-all.rules file, guided by the documentation wiki. As such, we do not agree with Patent Owner’s argument that “the record evidence of this” slip op. at 16
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“With respect to Petitioner’s assertions of collateral estoppel, notably in the Petition at pages 47, 49, 51, 52, and 54, with respect to limitations [1a] through [1d], we agree with Petitioner that Patent Owner is estopped from asserting that Sourcefire is not prior art to the challenged claims, and also estopped from asserting that those limitations are not taught or suggested by Sourcefire, to the extent that the limitations “do not materially alter the question” of patentability relative to the elements of the claims of the ’552 patent. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). Independent Claim 1 a. Petitioner’s Assertions As discussed above, we concur with Petitioner that collateral estoppel exists with respect to limitations [1a] through [1d]. Thus, we begin with a discussion of Petitioner’s assertions regarding claim limitation [1e].” slip op. at 21
Patent outcomesUS 10,567,343 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,567,343 - Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCSome claims unpatentablePTAB · Aug 5, 2024 · IPR2023-00446 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–4, 6–11, and 13–20 are unpatentable as obvious over Sourcefire and Emerging Threats; claims 5 and 12 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with Petitioner. The identified aspects of Emerging Threats website would have allowed interested parties to locate the rule sets, download the rule sets and make determinations regarding what rule to use in a packet-handling system, such as Sourcefire. Emerging Threats need not be indexed or broadly searchable under Petitioner’s theory of the ground of unpatentability, namely that Emerging Threats was known, one of ordinary skill in the art would have gone to Emerging Threats, and downloaded the emerging-all.rules file, guided by the documentation wiki. As such, we do not agree with Patent Owner’s argument that “the record evidence of this” slip op. at 16
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“With respect to Petitioner’s assertions of collateral estoppel, notably in the Petition at pages 47, 49, 51, 52, and 54, with respect to limitations [1a] through [1d], we agree with Petitioner that Patent Owner is estopped from asserting that Sourcefire is not prior art to the challenged claims, and also estopped from asserting that those limitations are not taught or suggested by Sourcefire, to the extent that the limitations “do not materially alter the question” of patentability relative to the elements of the claims of the ’552 patent. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). Independent Claim 1 a. Petitioner’s Assertions As discussed above, we concur with Petitioner that collateral estoppel exists with respect to limitations [1a] through [1d]. Thus, we begin with a discussion of Petitioner’s assertions regarding claim limitation [1e].” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“how and why persons of ordinary skill in the art would have modified the existing rules to prevent exfiltrations. PO Sur-reply 3. Patent Owner also argues that Petitioner’s assertions to make them “drop” rules, per Sourcefire, relies on what an administrator could have done, not what they would have been motivated to do. Id. at 4–5 (citing Pet. 57–58). We disagree with Patent Owner’s arguments. We continue to be persuaded that one of ordinary skill in the art, combining Sourcefire and Emerging Threats, would have understood that downloaded rules should be reviewed, and it would have been obvious to enable rules that such persons deemed appropriate. We find Dr. Staniford’s testimony to be persuasive on this point. See Ex. 2011, 67:10–68:24, 69:8–72; Ex. 1020, 109. We acknowledge that downloading all of a particualr ruleset from Emerging Threats and enabling all the rules, might have resulted in a drop in performance of the network appliance, but, at the same time, we are significant drop in performance, especially if a potential threat might be sufficient to warrant a minor performance hit. Patent Owner’s counsel acknowledged at oral hearing that instituting all rules of a set in “alert” mode would not result in a decrease in performance, even though some computational outlay must be engaged to engage those alert rules. See Hr’g Tr. 24:24–25:4. We are persuaded that judiciously implementing certain rules would not necessary result in a network device that is unusable. Additionally, there is testimony from Dr. Staniford that “you start out with your rules in alert because there might be false positives. I mean, for the best rule in the world, Snort wasn’t known for false positives in the rules, when you apply them to a large network.” Ex. 2011, 68:2–7. As such, we continue to determine that it would have been obvious, in combining Sourcefire with Emerging Threats, for one of ordinary skill in the art to have downloaded rules and implemented specific rules.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Reviewing all of the evidence of record, we are persuaded that the Petition’s obviousness rationale based on Sourcefire and Emerging Threats is not guided by impermissible hindsight bias. We find persuasive Dr. Staniford’s testimony that one of ordinary skill in the art would have understood that “this rule [SID:2003021] was not directed to looking for instances of exploits or attacks (which would be invisible within the encryption) but rather was looking for exfiltration of some kind of encrypted data.” Ex. 1003 ¶ 228. As discussed by Petitioner, such recognition was also made by Mr. Marinho and Dr. Goodrich, such that the rule would have been understood to possibly prevent exfiltrations. We continue to be persuaded that Petitioner provides that a correspondence exists between the REQUIRE-TLS-1.1-1.2 operator in the ’343 Patent and SID:2003021 in Emerging Threats, in that both detect an SSL/TLS version in application packet header field values to detect exfiltration attempts using out-of-date encryption protocols. Pet. 43 (citing Ex. 1003 ¶¶ 229–230). We are ’343 Patent discloses the interruption of a similar type of exfiltration, without resorting to impermissible hindsight bias, that Patent Owner asserts. Patent Owner has provided no evidence that Petitioner used the specification of the ’343 Patent to find an applicable rule in Emerging Threats, as opposed to the testified-version provided by Dr. Staniford that he recalls “working on a similar feature where we looked for large encrypted transmissions outbound from the network on non-HTTP ports as a possible symptom of exfiltration of large amounts of data.” Ex. 1003 ¶ 228. Thus, we are not persuaded by Patent Owner’s arguments.” slip op. at 30
Patent outcomesUS 10,567,343 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,567,343 - Unified Patents, LLC v. Dynapass IP Holdings LLCSome claims unpatentablePTAB · Jul 12, 2024 · IPR2023-01331 · APJ Lynne H Browne · IPR · Final written decision
Claim 5 is unpatentable over Veneklase and Jonsson; claims 1, 3, 4, and 6 were not shown unpatentable over Kew and Sormunen.
RulingsFinal written decision- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that it is too late for Petitioner to file a copy of the infringement contentions and argue that Patent Owner’s position in this Proceeding is inconsistent with its position in that proceeding. Petitioner had ample opportunity to raise its arguments about the infringement contentions well before the oral hearing. PO Resp. to Supp. 2. Patent Owner complied with our mandatory notice provision. Further, we agree with Patent Owner that its position in the infringement contentions is not inconsistent with its position in this proceeding. Paper 3, 1. For these reasons, we decline to exercise our authority under 37 C.F.R. § 42.5(b) to consider the infringement contentions and the new arguments during an oral hearing.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA6”) “for the ’658 Patent would have had at least (1) an undergraduate degree in electrical and computer engineering or a closely related field; and (2) two or more years of experience in security. EX1001, generally; EX1003, ¶¶49-51.” Pet. 5. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. Based on the record presented, including our review of the ’658 Patent and the types of problems and solutions described in the patent and the cited prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner
“Applicant’s foregoing computer security embodiment, utilizes two distinct communications channels and a random number generator in order to ensure that an authorized user of a computer system is notified that someone or something is seeking access to the computer system with his or her password. Moreover, Applicant’s foregoing invention is very cost effective as it employs substantially “off the shelf” and readily available components. Further, the use of a “secret” password, a “secret” substantially random number, and a “secret” second channel allows for multiple levels of security before access to the computer system is achieved and provides enhanced security over the prior art. Ex. 1005, 7:16–28. We do not agree with Patent Owner that these statements unequivocally support its position that Veneklase’s two-step authentication process is a principle of operation of its system. Rather, the quoted statements indicate that Veneklase’s use of two distinct communication channels and a random number generator are key features of Veneklase’s system that provide multiple levels of security and enhance security of that system. As modified Veneklase’s system still uses two distinct communication channels and a random number generator. Thus, to the extent that Veneklase’s enhanced security measures (i.e. two distinct communication channels and a random number generator) are a principle of operation of Veneklase’s system, the proposed modification does not destroy this principle of operation or render Veneklase’s system inoperable. Moreover, incorporating Jonsson’s teachings related to using an algorithm to create a new password would not destroy the principle of operation of Veneklase’s security system because it only changes how Veneklase accomplishes its goal of preventing unauthorized access to a computer system, rather than defeating its goal of preventing such access. See In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012). Further, we do not agree that Plas-Pak (a routine decision11) supports Patent Owner’s contention that the proposed combination impermissibly changes Veneklase’s principle of operation as Patent Owner has not identified differences between the two authentication processes that would be “unlikely to motivate a person of ordinary skill to pursue” the proposed combination. Plas-Plak, 600 F. App'x at 757-59.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“motivation to combine Veneklase and Johnson. PO Resp. 20–21. Petitioner does not propose modifying Veneklase to include Jonsson’s teachings solely because the security of the proposed combination is superior to the security in Veneklase. Rather, Petitioner asserts that “[a] POSITA would have been motivated to make such a combination because having only the one password transmitted via the computer system is more efficient and secure.” Pet. 31 (citing Ex. 1003 ¶ 91). The Petition explains how the combination is more efficient in that it requires only a single step which reduces the amount of time required for the authentication process. Id. We also agree with Petitioner’s reasoning that a person of ordinary skill in the art would have been “motivated to combine Veneklase and 11 “A routine decision is binding in the case in which it is made, even if it is not designated as precedential or informative, but it is not otherwise binding authority.” Patent Trial and Appeal Board, Standard Operating Procedure 2 (Rev. 11) 2 (July 24, 2023), available at https://www.uspto.gov/sites/default/files/documents/20230724_ptab_sop2_r ev11_.pdf. Jonsson because the combination merely uses a known technique to improve similar devices in the same way.” Pet. 33 (citing KSR, 550 U.S. at 401). Jonsson discloses a known algorithm and Veneklase discloses a system that is similar to Jonsson’s. In the absence of any evidence that applying Jonsson’s algorithm to Veneklase’s system is beyond the skill of a person of ordinary skill in the art, we agree that “the improvement is [no] more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 401.” slip op. at 26
Patent outcomesUS 6,993,658 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,993,658
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.