- Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01362 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds after finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the 5 Holloway et al., WO 02/49322 A2, filed Dec. 11, 2001, published June 20, 2002. Ex. 1006. 6 Pitroda, US 7,308,426 B1, filed Aug. 11,1999, issued Dec. 11, 2007. Ex. 1007. cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert contends that person of ordinary skill in the art (POSITA) [W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’974 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states that “[n]o formal claim constructions are required in this proceeding.” Pet. 6. However, Petitioner submits “preliminary” claim constructions proposed by the parties in the District Court case, including proposed constructions for the claim terms “transceiver” and “transmitter.” Pet. 7–9. Patent Owner states that it “does not dispute the Petition’s statement on claim construction for the purposes of this Preliminary Response.” Prelim. Resp. 8. Notwithstanding the parties’ statements disavowing the need for claim construction, in our analysis set forth below we consider construction issues regarding the independent claim terms “voice call communication,” “voice call signal,” “transceiver,” and “transmitter.” We invite the parties to further consider these issues going forward.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,381,974 - Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01363 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–32 and all grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree that Zalewski is substantively identical to Willgert. As discussed below in Section IV.D.4.c), Zalewski disclosed an RFID transponder in a removable cover for a phone that was completely separate from the voice call components of the telephone itself. Ex. 2001, 7:63–8:3. Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirement of a “communication device determining the mobile communication device is in an operational space” was not met. Ex. 1002, 94–95. On this basis, Applicant also argued that claim requirements of switching between a voice call state and an RFID transponder state were not met. Ex. 1008, 18, 91, 134–135, 155; Ex. 1002, 530. In contrast, Willgert discloses an RFID transponder that is integrated with a mobile telephone, and so it cannot be distinguished on the basis that was used for Zalewski. Ex. 1004 ¶ 32. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–32 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’947 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“not agree, based on the current record, that the claims should be construed to encompass a device that has independent RFID transponder components that are separate from and independent of the components that provide voice call capability. During prosecution of related applications, in distinguishing Zalewski, Applicant disavowed such a broad interpretation. For example, Applicant asserted: The term “transceiver” . . . is well understood by those of ordinary skill in the art. One of ordinary skill in the art would not reasonably interpret a "transceiver" so broadly as to incorporate an entire mobile device's circuitry, and in particular to be read on by two separate transmitters . . . . Ex. 1008, 40. Also: [A] person having ordinary skill in the art would have understood “a transceiver of a mobile communication device” to be a transmitter and receiver combined in a single package/housing/unit and sharing at least some common circuitry for both transmission and reception located within a mobile communication device. . . . . A person having ordinary skill in the art would understand Applicants’ disclosure as describing a single transceiver that can be switched from a first state in which it transmits voice call signals to a second state in which it transmits RFID signals. Id. at 92, 94. However, Petitioner also argues, and provides expert testimony in support, that it would have been obvious to integrate Willgert’s communications unit with the voice call capability of a mobile telephone. Pet. 53–54 (citing Ex. 1003 ¶¶ 129–130). At this stage of the proceeding, we find support for this position, including the fact that Willgert specifically teaches that the communications unit can be integrated into a mobile telephone. Ex. 1004 ¶ 32. Patent Owner challenges this argument based on the statement in Willgert that the communications unit can be “constructed so that the transponder will also function when the mobile telephone is switched-off.” Prelim. Resp. 13–15 (citing Ex. 1004 ¶ 31). However, Willgert provides this as one option, and we do not find that this statement teaches away from a fully integrated approach alternative.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,405,947 - PTAB · Mar 5, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claim 15 based on Gallagher and Lumia, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Holistic Assessment of the Fintiv Factors On this record, after weighing all of the factors and taking a holistic view, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we determine that the circumstances presented weigh against exercising our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the Texas litigation.” slip op. at 16
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’255 patent in the Texas Litigation. Prelim. Sur-reply 4. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 15 would have been obvious in view of the combination of Gallagher and Lumia.” slip op. at 31
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 12–14 and 17–23. Prelim. Resp. 1; Ex. 2002. Based on our review of Exhibit 2002, we determine that a disclaimer of claims 12–14 and 17–23 of the ’255 patent under 35 U.S.C. § 253(a) has been filed with the Office as of December 9, 2024. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 12–14 and 17–23 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 12–14 and 17–23. As a result, the remaining challenged claim is claim 15 (“the challenged claim”).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,335,255 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00232 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–6 and 8–17 based on reasonable likelihood that Google would prevail on the asserted obviousness grounds over Ludtke, alone or with Kon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’730 patent.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for patent owner
“third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 7:10–22, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’730 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 5:42–56, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 6:32–64, Fig. 5 (describing activities of an agent). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,352,730 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00233 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 based on a reasonable likelihood of prevailing on obviousness grounds over Ludtke or Ludtke and Kon.
RulingsInstitution decision- Prior constructionPrior construction adoptedDecided for patent owner
“The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority,” or “third party that operates a trusted authority,” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’954 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:5–17, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’954 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:37–51, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:30–33) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 7:27–59, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, are presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third party that operates a trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third party that operates a trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 63–67 (citing Ex. 1006 ¶¶ 194, 234, 241, 265–266, Figs. 5, 9; Ex. 1003 ¶¶ 184–185). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 68 (citing Ex. 1003 ¶¶ 186–187). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claims 10 and 13. Pet. 69 (citing Ex. 1003 ¶ 188). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 3, 14, and 17, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,886,954 - PTAB · Nov 6, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–30, finding a reasonable likelihood that the challenged claims are obvious over the specified combinations of prior art.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Institution Decision and directed us to revisit our analysis regarding Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Paper 14 (“Remand Decision,” “Remand Dec.”), 4–8. The Director agreed that our determination that the first part of the Advanced Bionics framework was met (id. at 5 (citing Orig. Inst. Dec. 9– 10)), but with respect to the second part of the Advanced Bionics framework, the Director stated: I find that Petitioner’s arguments and cited evidence establish that the Office erred in a manner material to patentability under the particular circumstances of this case. Specifically, Petitioner’s arguments and cited evidence establish there is substantial overlap in the subject matter described in the ’009 patent and the ’148 patent[1] (subject to the ʼ148 FWD)[2], generally, and the claimed subject matter recited by the challenged claims of the ’009 patent and of the ’148 patent, specifically. Remand Dec. 6 (citing Pet. 15–68; Ex. 1010; Ex. 2001). The Director further found that “the Office erred by overlooking the significance of the ’148 FWD as it pertains to the patentability of the claims of the ’009 patent.” Id. at 7. Lastly, the Director determined that, “under the specific circumstances of this proceeding, I find the second part of the Advanced Bionics framework is satisfied,” such that “the facts here do not warrant exercising discretion to deny institution under 35 U.S.C. §325(d).” Id. at 8. As such, given that the only discretionary issues argued by the parties were directed to denial under 35 U.S.C. §325(d) (see Pet.; Prelim. Resp.), we proceed to consider the merits of the grounds of unpatentability raised in the Petition. Further, as set forth below, we determine 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). Thus, we institute an inter partes review in this proceeding.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’009 Patent is unpatentable. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–30 of the ’009 Patent on the following asserted grounds: Claims 1–5, 8–24, and 26–30 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, and Hayter; and Claims 6, 7, and 25 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, Hayter, and Esbensen;” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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, four years of industry experience and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber- 3 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 4 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 5 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 6 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 7 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). attacks.” Pet. 5 (citing Ex. 1003 ¶¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, 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
- PTAB / AIA Trials › §315(e) estoppelDecided for patent owner
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). With respect to the language of the instant challenged claims, we agree with Patent Owner on the issues of collateral estoppel. As Patent Owner points out, the prior determinations were made with respect to a different claim construction standard. Additionally, although the claims of the ’148 Patent and ’009 Patent are similar in scope, the recitations are not identical. Therefore, we evaluate the arguments and evidence presented in the Petition to determine whether Petitioner has demonstrated a reasonable likelihood that at least one of the challenged claims is unpatentable, rather than assuming that Patent Owner is generally estopped from asserting patentability of the challenged claims over previously presented art. Nonetheless, where appropriate, we consider the Petition’s citations to the ’148 FWD, which is part of the evidence of record in this proceeding. More particularly, we agree with Petitioner that certain issues were decided by the ’148 FWD, having been resolved against Patent Owner and affirmed by the Federal Circuit, and are binding in this proceeding. Pet. 11. Given that the ’009 Patent is a continuation of the ’148 Patent, sharing an identical Specification, we agree that Roese, Golnabi, Huima, Hayter, and Esbensen are acknowledged as prior art, that there would have been motivation to combine the references, and that combinations of those references demonstrate the obviousness of all claims of the ’148 Patent. See Id. at 11–12. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,681,009 - PTAB · Jul 24, 2023 · IPR2023-00445 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–27, finding a reasonable likelihood that Law renders at least one challenged claim unpatentable; it instituted all petition grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We agree with Petitioner’s arguments. The fact that the disclosures of cited references are the same or similar is unremarkable in that they are applied against the same claims. Additionally, Patent Owner has not presented evidence that the instant Petitioner applied the prior petition, and its non-institution, as a roadmap to try and correct errors of the prior petition. As such, we agree with Petitioner that factor (1) weighs strongly against discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’266 Patent. Accordingly, we institute an inter partes review of claims 1–27 of the ’266 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We do not agree with Patent Owner’s arguments. Under Petitioner’s discussion of Law, Internet 155 is the other network and LANs 150a and 150b constitute a single network through network access device 149c. If we take the LANs as a single network, then intrusions prevented by either firewall would protect the overall network collectively. As discussed below, we are persuaded, by Petitioner, that one of ordinary skill in the art would have regarded the paired LANs of Law as viewable as a single network, when compared to the Internet, and each firewall would provide protections to the single network. Patent Owner also argues that Law does not teach or suggest that network access device 149c joins LANs 150a and 150b into a single network because these networks still need to communicate with each other over yet another network, such as the Internet. Prelim. Resp. 33–35. Patent Owner also argues that a device that controls network access between two sub-systems or a sub-system and the Internet does not transform two separate networks into one. Id. at 34–35. We do not agree with Patent Owner’s arguments. As Petitioner points out, Law refers to “network 150,” rather than separately specifying subnetworks 150a and 150b. Pet. 21 (citing Ex. 1005 ¶ 55). We also agree with Petitioner that all network traffic between joined LANs 150a and 150b and the Internet must pass through either firewall 146a or 146b, and that Law’s disclosure of an alternative “bypass” embodiments confirms that ordinarily skilled artisans would have viewed firewalls 146a and 146b as providing the entire interface across the boundary of the network. Id. (citing Ex. 1003 ¶¶ 64–65). We have considered Petitioner’s evidence and arguments with respect to limitation [1.0], including the relevant testimony of Dr. Jacobson, and Patent Owner’s traversing arguments, and find Petitioner’s evidence and arguments to be sufficient to show that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that Law teaches or suggests this limitation.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner also asserts that the preambles of independent claims 1, 8, and 15 are limiting, and asserts that the preambles are “essential to understand the ‘all traffic traversing the boundary’ limitation in the body of the claims.” Prelim. Resp. 23. We discuss the understanding of those limitation in our analysis below, determining the preambles to be limiting in the context discussed.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,785,266 - PTAB · Apr 17, 2023 · IPR2022-01607 · APJ Minn Chung · IPR · Institution
Instituted IPR of claims 1–24 on both §103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’572 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Issue preclusion [i.e., collateral estoppel] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [a party in the first action] had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018) (“an affirmance of an invalidity finding, whether from a district court or the Board, has a collateral estoppel effect on all pending or co-pending actions”) (citing B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 148 (2015) (“where a single issue is before a court and an administrative agency, preclusion also often applies”); MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376– 77 (Fed. Cir. 2018) (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case)). With respect to the language of the challenged claims, we agree with Patent Owner on the issue of collateral estoppel. As Patent Owner argues, and we agree, claim construction of the term “caching the one or more packets” under the Phillips standard was not actually litigated in the 01454 IPR, nor was it decided in the 01454 FWD. Prelim. Resp. 12; cf. SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016) (because the Board applied the BRI claim construction standard while the district courts apply a different standard under Phillips, “the issue of claim construction under Phillips to be determined by the district court has not been actually litigated”); M2M Sols. LLC v. Sierra Wireless Am., Inc., 2020 WL 7767639, at *5 (D. Del. Dec. 4, 2020) (distinguishing Trans Ova Genetics, stating that “[t]he different claim construction standards applied by the PTAB and the federal courts prevent any expansion of the collateral estoppel doctrine here”). In addition, although the claims of the ’572 patent and those recited in the ’148 patent may be similar in certain aspects, the recitations are facially different and, unlike in the 01454 FWD, the scope of the claims of the ’572 patent must be evaluated (expressly or implicitly) under the Phillips standard in this proceeding before applying the challenged claims to the cited prior art. Thus, for purposes of this Decision, we evaluate the arguments and evidence presented in the Petition to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to the grounds of unpatentability presented, rather than assuming that Patent Owner is generally estopped from asserting patentability of the challenged claims over the prior art references presented in both the 01454 IPR and this proceeding. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Patent Owner contends that the claim term “caching the one or more packets” recited in independent claims 1, 9, and 17 should be construed to require that “full versions of the packets are cached while swapping between rule sets.” Prelim. Resp. 6. Although it is not entirely clear what Patent Owner means by “full versions of the packets,” Patent Owner asserts that “caching a portion of each packet (e.g., the header)” disclosed in Hayter does not meet the “caching the one or more packets” limitation under Patent Owner’s proposed construction of the term. Id. at 8–9, 16–18. Although Patent Owner’s argument raises an issue of claim construction, we need not expressly construe “caching the one or more packets” for purposes of the Decision because, as discussed in Section III.D.7 below, Petitioner shows sufficiently that Hayter teaches or suggests “caching the one or more packets” even under Patent Owner’s proposed claim construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that in the 01454 FWD, the Board found that “a person of ordinary skill in the relevant art in January 2013 would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and 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. 6 (citing 01454 FWD, 5). Petitioner asserts that the same level of ordinary skill in the art should apply in this proceeding. Id. (citing Ex. 1003 ¶ 37). At this stage of the proceeding, Patent Owner also adopts the level of ordinary skill in the art from the 01454 FWD. Prelim. Resp. 5 (citing 01454 FWD, 5). For purposes of this Decision, we find no reason to deviate from the Board’s previous determination and, therefore, adopt the undisputed level of ordinary skill in the art previously found by the Board in the 01454 FWD.” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,511,572 - PTAB · Dec 5, 2022 · IPR2022-00890 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds, finding a reasonable likelihood that Pan and Pan with Hoshino render at least claim 1 obvious.
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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“5. Analysis of the Parties’ Claim Construction Positions Because the meanings for the terms proposed by Petitioner do not impact our Decision, we need not explicitly construe these terms. As for “a plurality of application sessions,” for purposes of this Decision we accept the plain and ordinary meaning proposed by Patent Owner where “plurality” means, essentially, “multiple.” Prelim. Resp. 12. Generally speaking, the term “multiple” can be defined as “something in units of more than one or two,” and is arguably a synonym for “plurality.” See Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/ dictionary/multiple, last accessed Nov. 15, 2022.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“network,” it is not clear to us at this point in the proceeding that the plain meaning of “a” should be limited to “one” or “a single” communication network. Prelim. Resp. 12. In claim 1, the determiner “a” appears on its face to be used for purposes of proper antecedent basis, establishing that “a communication network” is recited for the first time in the preamble. See Ex. 1001, 9:46–47, (Claim 1 reciting the step, “supporting a plurality of application sessions in a communication network”). Moreover, “one” does not particularly help clarify the meaning of “a communication network,” structures, relationships, and functionality a person of ordinary skill in the art would understand “a communication network” to encompass. Patent Owner mainly asserts that the terms “a plurality of application sessions,” and “a communication session” are used in series and thus “a” means “single.” Prelim. Resp. 13. Yet Patent Owner has not pointed to evidence in the ’968 patent that describes specifically what a “single” or “one” communication network entails, or that “a communication network” is equivalent to “one communication network.” Prelim. Resp. 12–13.9 And, for example, Figure 1 of the ’968 patent, which “illustrates an exemplary Voice over Internet Protocol (VoIP) network related to the present invention,” appears to include multiple networks 120, 121, 130, 131, 140, 141, as well as core network 110. Ex. 1001, 1:55–56. Indeed, the preamble of claim 1 uses the term “comprising” which, even if the preamble is limiting as Patent Owner asserts, is open ended and not restrictive. See MPEP 2111.03 (“The transitional term ‘comprising’, which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.”). Thus, even if “a” might be understood as “one,” such claim language does not on its face exclude “multiple” communication networks.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art, but states that it “reserves the right to do so.” Prelim. Resp. 13. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’968 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,072,968 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 6, 2022 · IPR2022-00557 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 8, 10–12, 21, 22, 24, and 25 based on obviousness over Foti and the listed RFCs, Wright, and Lloyd.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’669 Patent. Accordingly, we institute an inter partes review of claims 1–3, 6, 8, 10–12, 21, 22, 24, and 25 of the ’669 Patent on the ground of unpatentability raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under Advanced Bionics, Becton Dickinson factors (a), (b), and (d) are considered in the evaluation of whether the same or substantially the same art or arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 10. Becton, Dickinson identifies these three factors as (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; and (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art. Becton, Dickinson, Paper 8 at 17–18.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, on the present record, we determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success from that combination. As discussed above, we are persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. We are not persuaded by Patent Owner’s argument. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, which Patent Owner has not pointed out, but accepting that Patent Owner has no burden of persuasion, we determine that the motivation proffered by the Petition is sufficient for institution.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot reached
“Petition, we must also consider any objective evidence of nonobviousness put forward by the parties. Petitioner acknowledges, and Patent Owner emphasizes, that Patent Owner submitted an European Telecommunications Standards Institute (ETSI) Telecommunications and Internet Converged Services and Protocols for Advanced Networking (TISPAN) Change Request related to the embodiments recited in the ’669 Patent. Ex. 2008, 5; Prelim. Resp. 1–2. Patent Owner further asserts that the standards agency adopted it and that adoption is industry praise and supports the nonobviousness of the challenged claims. Prelim. Resp. 6–7, 65 (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1334 (Fed. Cir. 2016)). Patent Owner also asserts that Petitioner’s expert in the District Court Case, Dr. Jeffay, admitted that the Change Request was “related to the invention claimed in the ’669 Patent,” and thus has nexus to the challenged claims, being reasonably commensurate with the scope of the challenged claims. Id. at 65 (quoting Ex. 2008, 5). On this record, however, we cannot verify the nexus to the challenged claims merely through the testimony of Petitioner’s expert in the District Court Case. That expert testified: “I also understand that KPN and TNO submitted an ETSI TISPAN Change Request related to the invention claimed in the ’669 Patent in January 2009.” Ex. 2008, 5 (emphasis added). Although the expert’s testimony is evidence, it is only weak evidence, as it is not supported by any underlying documentation, such as the Change Request itself or a comparison of that Change Request and the issued claims of the ’669 Patent. As such, we remain open to further consideration of this evidence of nonobviousness through industry praise, but determine it to be insufficient to overcome the case for obviousness of the challenged claims provided in the Petition at this stage of the proceeding.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,667,669
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.