• Hamilton Technologies LLC v. Fleur TehraniAll claims unpatentable
  PTAB · Dec 28, 2021 · IPR2020-01199 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–6, 9–12, 29–33, and 41 are unpatentable as obvious over the Carmichael-Anderson and Taube-based combinations; the Carmichael anticipation ground was not proven.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner that Dr. Imbruce’s testimony should be disregarded. With respect to Patent Owner’s contentions about “technically erroneous disclosures” and the construction of “for a next breath,” those are really about Patent Owner’s disagreements about those matters, not whether Dr. Imbruce was attempting to mislead the Board. Disagreement between the experts is not a basis for disregarding testimony. We have also reviewed the entirety of Dr. Imbruce’s deposition, and, in particular, the various parts identified by Patent Owner. PO Resp. 76–77. And, contrary to Patent Owner’s assertions, we found Dr. Imbruce gave detailed answers in response to Patent Owner’s questions. We found Dr. Imbruce’s testimony to be adequate. See, e.g., Ex. 2016, 107:11–115:8 (discussion of Anderson references, explaining the similarities of the references, but declining to vouch for data he has not seen or collected); 115:9–116:6 (FDA permission, offering to confirm what reference said about FDA approval, but attorney moving on to other questions). Thus, we do not find Dr. Imbruce’s behavior during cross examination as a reason to give no weight to the entirety of his testimony.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(i) a medically trained physician or clinician specializing in treating respiratory failure issues with at least five years of practical clinical ventilator experience treating such conditions; or (ii) a Master’s degree in Electrical Engineering or a related field and about five years of practical experience with developing ventilators for clinical patient treatment; or (iii) a Bachelor’s degree in Electrical Engineering or a related field and about 10 years of practical experience with developing ventilators for clinical patient treatment. Pet. 20‒21 (referencing Ex. 1002 ¶¶ 71‒72). Petitioner proposes that “[a] higher level of education or specific skill might compensate less experience, and vice versa.” Id. at 21. Patent Owner does not present an opposing view of the level of skill of the hypothetical person having ordinary skill in the art of the ’571 patent. See PO Resp. passim. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’571 patent, based on our review of the record.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “In our Institution Decision, we determined that only the claim terms “first means” and “second means” required construction. Inst. Dec. 25–27. Neither party disputes those constructions and we maintain and adopt them for the purposes of this Decision. We determine that, for purposes of this decision, no other terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Carmichael lacks adequate disclosure to anticipate the apparatus of claim 1. Specifically, because Carmichael focuses on the result of physician surveys, and not on the description of a ventilation system per se, Carmichael lacks details as to the specific manner in which the assist control mode was being used to control PEEP and FIO2 levels. Specifically, we cannot discern that Carmichael’s discussion of an assist control mode for mechanical ventilation necessarily entails adjustments to FIO2 and PEEP “for a next breath of the patient” as recited in claim 1. As explained by Patent Owner, it is possible that the parameters of PEEP and FIO2 could have been set manually by the physician and/or could have been updated only periodically during treatment. See, e.g., PO Resp. 25‒26. Thus, Petitioner has not shown by a preponderance of evidence that Carmichael anticipates claim 1, or claims 2, 5, 6, and 11 that depend from claim 1.” slip op. at 20

  Patent outcomesUS 7,802,571 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,802,571
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Instituted
  PTAB · Dec 17, 2021 · PGR2021-00093 · APJ Meredith C Petravick · PGR · Institution

  The Board instituted PGR on claims 1–25 on all petition grounds after finding the § 101 challenge to claim 1 met the institution threshold.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Fintiv sets forth the factors that we weigh in determining whether to exercise our discretion to deny institution of the post-grant patent review proceeding here under 35 U.S.C. § 324(a). See Fintiv, Paper 11, 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. “[T]he Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Because the claims at issue here, in particular claim 1, differ from the March 2015 amended claims of the ’859 patent and the August 2014 amended claims of the ’296 patent (see, e.g., Ex. 1001, 46:59–47:34), we are not persuaded that the cited prosecution history equally applies to the claims here. In particular, we note that claim 1, which we discuss in the analysis below, does not recite a first transceiver corresponding to a short-range communication mode and a second transceiver corresponding to a long-range communication mode, and does not specify whether a first or second transceiver perform certain actions recited in the claim. Id. As Patent Owner points out (Prelim. Resp. 19), claim 1 of the ’614 patent more but claim 1 does not specify whether it is long or short range and merely recites it being used to establish a connection for the exchange of information between a mobile device and a payment accepting unit in some of the claimed steps. Id. Thus, considering Becton, Dickinson factors (a) and (d), we are not persuaded that the same or substantially the same arguments concerning § 101 were previously presented to the Office. Because we determine that the same or substantially the same arguments with respect to § 101 were not previously presented to the Office, we need not address part two of the Advanced Bionics framework with respect to those arguments.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person having ordinary skill in the art (“POSITA”)] would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’614 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 22

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionInstituted

    “Ex. 1001, 46:61–47:34. Based on the current record, we are persuaded that the limitations above recite the concept of identifying a merchant and making a purchase from the merchant. In particular, claim 1 recites steps for identifying payment accepting units (i.e., a merchant) — limitations 1.2– 1.7.1. Claim 1 also recites steps for conducting the purchase —limitations 1.7.2–1.11. Based on the current record, we find that identifying a merchant and making a purchase from the merchant is a commercial interaction, a sales activity. It falls within the enumerated “[c]ertain methods of organizing human activity” grouping of abstract ideas set forth in MPEP § 2106.04(a)(2).” slip op. at 28

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Berkheimer · Phillips · Nautilus
  Patents in suitUS 10,891,614
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution denied
  PTAB · Dec 16, 2021 · PGR2021-00084 · APJ Meredith C Petravick · PGR · Institution

  The Board denied institution because Petitioner did not show that any of claims 1–20 was more likely than not unpatentable on the asserted § 112, § 102, or § 103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “instituted unless “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”1 After considering the Petition, the Preliminary Response, Reply, Sur- reply and the evidence of record, we determine that Petitioner fails to demonstrate that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “We are not persuaded by Petitioner’s arguments because Petitioner’s proposed construction improperly attempts to read a particular embodiment described in the ’608 patent into the claims. It is not proper to read limitations from the ’608 patent into the claims: Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “[A]lthough the specification often describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323. As Mr. Smith points out, the ’608 patent does describe offline- payment operated machine 1500 as an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). Ex. 1005 ¶ 84 (citing Ex. 1002, 39:39– 45). But, the ’608 patent describes offline-payment operated machine 1500 as merely one example of an offline-payment operated machine in some implementations. The ’608 patent states: FIG. 28A illustrates a block diagram of an offline-payment operated machine 1500 in accordance with some implementations. For example, the offline-payment operated machine 1500 (e.g., a form of the machine 120) is an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). For example, the offline-payment operated machine 1500 is a washer or dryer at a laundromat, a parking meter, a car wash payment kiosk, or other offline-payment operated machine that dispenses goods and/or services. Ex. 1002, 39:38–48 (emphases added). The ’608 patent emphasizes that offline-payment operated machine 1500 is merely an example. Id. at 39:52– 56 (“The components of the offline-payment operated machine 1500 in FIG. 28A are examples and one of skill in the art will appreciate that various” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person having ordinary skill in the art (“POSITA”)], as of the date of the alleged invention, would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least three years of work experience in electronic payment systems, vending machine technologies, or telecommunication solutions. Pet. 29 (citing Ex. 1005 ¶ 52). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’608 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Under 35 U.S.C. § 112(a), “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . .” To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The requirement under § 112 does not demand that the specification recite the claimed invention verbatim. Id. at 1352 (citations omitted). The “claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement.” In re Smith, 481 F.2d 910, 914 (CCPA 1973). “Original claims are part of the original specification and in many cases will satisfy the written description requirement.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017). We agree with Patent Owner. Petitioner, itself, indicates that the specification of the ’608 patent discloses an interface module counting the electrical pulses generated by a coin receiving switch. The Petition states: “Specifically, the objective inquiry reveals that it is only the ‘first interface module’ that is mentioned as counting one or more electrical pulses generated by the coin receiving switch.” Pet. 32; see also Ex. 1005 ¶ 125 (corresponding testimony of Mr. Smith). In this regard, the ’608 patent states: In FIG. 28A, the first interface module 1522 is configured to sample payment acceptance signals from the microswitch 1502 (e.g., a coin receiving switch) via lead 1532 of the offline-payment operated machine 1500. For example, the payment acceptance signals are indicative of a coin being received by the microswitch 1502 which depress lever 1504. Ex. 1002, 40:35–40. The ’608 patent also describes FIG. 28B as illustrating signals sampled by the first interface module 1522, “[f]or example, the preset sequence of payment acceptance signals indicative of the preset number of coins include pulses (i.e., payment acceptance signals) 1552, 1554, 1556, and 1558.” Id. at 40:50–58; see also id. at 41:59–42:4 (“payment acceptance signals are indicative of a preset number of coins received by the coin receiving switch”); 42:49–55 (describing identifying a count of pulses). The ’608 patent further states: “[T]he terms used for labels (e.g., ‘first,’ ‘second,’ and ‘third’) are meant solely for purposes of designation and not for order or limitation.” Id. at 46:11–14. Claim 19, as originally filed, recited limitation (b), with the coin counting interface module being labeled as the second interface module. Ex. 1003, 283. Given the originally filed claim 19 and the above disclosures of the ’608 patent, Petitioner does not persuade us that the ’608 patent does not reasonably convey to skilled artisans that the patentee did not possess the claimed invention as of the filing date. Petitioner does not show sufficiently that claims 19–20 are more likely than not unpatentable under 35 U.S.C. § 112(a) for lack of written description.” slip op. at 15

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,891,608
• Cloudflare, Inc. v. Sable Networks, Inc.Institution denied
  PTAB · Dec 16, 2021 · IPR2021-01067 · APJ Stacey G White · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 8 would have been obvious over Beshai and Simpson.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to the remaining challenged claim. We hereby do not institute an inter partes review as to the challenged claim of the ’431 patent on the asserted grounds of unpatentability.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “claims 1–7 and 9 of the ’431 patent.” Prelim. Resp. 32; Ex. 2006. “[A] patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d). 37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting the requirements of 37 C.F.R. § 1.321(a), and that no further action is required in the Office). Based on our review of Exhibit 2006 and the Office’s public records, we conclude that claims 1–7 and 9 have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), and thus, no inter partes review shall be instituted as to those claims. See 37 C.F.R. § 42.107(e) (“No” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialNot reached

    “E. Discretionary Denial Petitioner contends the Petition should not be denied institution on discretionary grounds. Pet. 57–63; Reply. Patent Owner contends we should deny institution under 35 U.S.C. § 314(a). Prelim. Resp. 33–42; Surreply. 5 Petitioner relies on Simpson for this limitation and does not direct us to any teachings in Beshai regarding the recited “packet discard time limit.” See Pet. 10–11. institute an inter partes review on that basis, we need not determine whether it would be appropriate to discretionarily deny the Petition under § 314(a).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have had an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and about 2 to 3 years of academic or professional work experience in computer networking and switching technology with a focus on routing and quality-of-service or comparable experience.” Pet. 8 (citing Ex. 1003 ¶ 55). As also asserted by Petitioner, a “higher level of education could substitute for less industry level of education.” Id. Patent Owner does not address the level of ordinary skill of the art. See Prelim. Resp. Based on our review of the current record, we adopt Petitioner’s articulation of the level of skill in the art, which is consistent with the ’431 patent and the asserted prior art, and we apply it in our obviousness evaluations below.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 6,954,431
• Microchip Technology Inc. v. HD Silicon Solutions LLCInstitution denied
  PTAB · Dec 15, 2021 · IPR2021-00872 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 would be unpatentable over Lempel and Itou, with or without Haswell.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In summary, Petitioner does not explain with sufficient specificity how or why a person of ordinary skill in the art would have combined Lempel with Itou. Because each ground upon which the Petition relies is based on the combination of Lempel and Itou, including each independent claim challenged, Petitioner has not proven by a reasonable likelihood that it would prevail in showing that any claim of the ’619 patent is unpatentable. VII. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of claims 1–32 of the ’619 patent is unpatentable. VIII. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied, and we do not institute inter partes review of any claim of the ’619 patent based on the grounds asserted in this Petition.” slip op. at 19

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “V. DISCRETION UNDER 35 U.S.C. § 314(A) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp. 40–46 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine that Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which is supported by Dr. Sechen’s testimony. See Ex. 1002 ¶¶ 26–28.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “For instance, Petitioner does not identify persuasively the differences between either Lempel or Itou and the limitations they supposedly teach in combination, nor does Petitioner provide persuasive explanation as to how either reference would be modified to accommodate the distinct architecture of the other reference (Lempel’s parity checking and Itou’s ECC circuitry) in a combination. Petitioner does not explain adequately how this proposed combination would operate. Because the teachings of Lempel and Itou are somewhat contradictory, Petitioner should have provided at least some explanation as to how the resulting system operates and why a person of ordinary skill in the art would have combined the references to operate in that manner. See Prelim. Resp. 24. Petitioner next argues that a POSITA could use the error detection and recovery method of Itou (e.g., an ECC (Error Check Code)-based method) when a correctable error is detected, and the error detection and recovery method of Lempel (e.g., targeted invalidation of the data errors in the cache and selectively replacing the invalidated data with error-free data from the main memory) when a non-correctable error is detected to reduce the latency associated with accessing the content of the main memory. Pet. 67. This rationale, however, fails to address Lempel’s consistent disparagement of ECC approaches, as adopted in Itou. Based on Lempel’s teachings, adding ECC functionality to an integrated circuit already configured with parity checking functionality would increase “space on the silicon” as well as increase cost. See Ex. 1006, 1:31–44, 1:58–61. Yet, Petitioner does not acknowledge these drawbacks of ECC circuitry, much less explain why they would have been acceptable to a POSITA. Thus, we are not persuaded a POSITA would have been willing to combine the two references as proposed by Petitioner.” slip op. at 17

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,302,619
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Dec 15, 2021 · IPR2020-01123 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 9 and 29 are unpatentable as anticipated by Arnold and obvious over Arnold; Petitioner did not show they were obvious over Chang and Stefik.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “do not agree with Petitioner that it would have been obvious to combine Stefik’s tamper resistant barrier with Chang. Petitioner argues that a tamper resistant barrier would enhance security and would further Chang’s goal of allowing only authorized code to be executed on its platform. Pet. 64 (citing Ex. 1005, 8:55–59; Ex. 1006, 27:11–15). We agree with Patent Owner that this reason to combine is too general and conclusory to explain how the specific modification of securing Chang’s public keys behind a tamper resistant barrier would have provided a relevant benefit to the combination beyond Chang’s own secure distribution system that provides security, without placing the public key behind a tamper resistant barrier. We determine that such a generalized and conclusory reason for combining Chang and Stefik is insufficient. Magnum, 829 F.3d at 1380 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory on evidence of record, to support the legal conclusion of obviousness.”). Specifically, Chang discloses that platform producers desire to allow only authorized code to be executed on their platform. Ex. 1005, 8:55–59. This is done by identifying the software that will execute on their platform. Id. at 8:60–62. Chang provides a solution to this problem by using software passports that include digital signatures. Id. at 8:65–9:48. Chang’s solution involves using a public key which is not kept behind a tamper resistant barrier. Id. Thus, Petitioner’s proposed motivation to combine to “enhance security” (Pet. 64) and to allow only authorized code to be executed on a platform does not explain why the public key would have to be kept behind a tamper resistant barrier. In response to the argument that its motivation is too conclusory, Petitioner further explains that its proposed motivation to combine (a platform producer’s desire to allow only authorized code on their platforms) would have motivated a POSITA to secure Chang’s public key behind a tamper resistant barrier to prevent a user from replacing the key. Pet. Reply 19 (citing Ex. 1005, 8:55–59). We agree with Patent Owner that this motivation suffers from hindsight bias as it is the same motivation disclosed in the ʼ721 patent itself for securing public keys behind a tamper resistant barrier. Ex. 1001, 14:23–28 (“In addition, maintaining the ‘public’ key within a tamper resistant environment forecloses the significant threat that the owner of protected processing environment 108 may himself attack the environment.”). Petitioner does not provide evidence that the motivation of preventing the user themselves from replacing the public key was a known problem in the industry or that it stems from either Chang or Stefik. Without such evidence, we conclude that Petitioner’s articulated reason for reconstruction. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47

  • Expert testimonyPetitioner expert creditedOther

    “parties, we are persuaded that Arnold discloses limitation (c) of claim 9. Arnold discloses an adapter card with a secured area. Ex. 1004, 5:49–51 (describing that the microprocessor, memory, and cryptographic functions of Arnold’s cryptographic system are “housed within a secured area or module” of an adapter card); Pet. 49–50. Arnold describes the secured area of its adapter card as an area “where data is protected from disclosure” (Ex. 1004, 5:10) and “which is protected from physical and direct electrical access” (Ex. 1004, 10:47–48). Pet. 49–50. These disclosures indicate that the secured area of Arnold’s adapter card is a “tamper resistant barrier” that prevents the data stored within from read access and, therefore, keeps the data “hidden from the user” as recited in limitation (c). We also credit Dr. Chatterjee’s testimony that, based on Arnold’s description of the secured area of the adapter card, the secured area forms a tamper resistant barrier that keeps data stored within, hidden from the user. Ex. 1002 ¶¶ 141–144 (citing Ex. 1004, 3:56–57, 5:9–12, 5:52–53, 6:13–32, 6:28–30, 6:51–52, 6:55–59). Arnold makes clear that the “secured area of the card . . . contains the public key KPU” (Ex. 1004, 6:51–52) and that “said public key (KPU) is stored within said secured area.” Ex. 1004, 12:25; see also id. at 12:42 (“means for providing a public key (KPU) within said secure areas”); Pet. Reply 9. Dr. Chatterjee’s testimony, which we determine to be credible, also supports Petitioner’s contention that Arnold’s public key is within the secured area of Arnold’s adapter card. Ex. 1002 ¶ 143 (“The public key is secured behind a tamper resistant barrier and therefore hidden from the user.”). in the secure area of Arnold’s adapter card and that (2) the secure area protects data from disclosure and prevents physical and direct electrical access.5 Thus, we agree with Petitioner that Arnold’s public key is “secured behind a tamper resistant barrier and therefore hidden from the user” as recited in claim 9.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s articulation of the level of ordinary skill in the art, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a POSITA is supported by the testimony of Dr. Chatterjee and is commensurate with the level of ordinary skill as reflected in the prior art and the ’721 patent. We note, however, that our analysis would be the same under either party’s definition of a POSITA.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner argues the term “load module” recited in claim 9 should be construed as “executable code, such as a computer program or an applet, plus any associated data required for code execution.” Pet. 19. To support this proposed construction, Petitioner cites the Specification’s statements that “[l]oad modules may contain algorithms, data, cryptographic keys, shared secrets, and/or other information that permits a load module to interact with other system components,” and “[f]or a load module to operate and interact as intended, it must execute without unauthorized modification.” Id. (emphasis omitted) (quoting Ex. 1001, 3:28–35); see also id. at 19–20 (citing Ex. 1001, 4:36, 4:51–56, 5:34–39). Petitioner also points to the “Field of the Invention” section of the ’721 patent, which provides that “[t]he present invention relates to . . . techniques for certifying load modules such as executable computer programs or fragments [(called ‘applets’)] thereof as being authorized for use by a protected or secure processing environment.” Id. at 20 (alterations in original) (emphasis omitted) (quoting Ex. 1001, 1:17–28) (citing Ex. 1001, 2:33–37; Ex. 1002 ¶¶ 67–69). According to Patent Owner, Petitioner’s proposed construction is inconsistent with the construction adopted in co-pending litigation of the related matters, in which the term was construed to mean “executable code and any associated data.” PO Resp. 22 (citing Ex. 2007, 44). Nevertheless, Patent Owner contends that the term “load module” does not require construction and should be given its plain and ordinary meaning. Id. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute and that its arguments would apply equally under the construction of the co-pending litigation or under a plain and ordinary meaning of the term. Id. we agree with Patent Owner that no explicit construction of this phrase is necessary to resolve the disputes between the parties. 2. “associated digital signature” Patent Owner points out that “the District Court [for the Eastern District of Texas] adopted a construction of ‘associated digital signature’ as ‘a digital value, verifiable with a public key, that can be used to determine the source and integrity of the load module/executable.’” PO Resp. 21 (citing Ex. 2001, 1). Nevertheless, Patent Owner contends that the term “associated digital signature” does not require construction and that its arguments would apply equally under the District Court’s construction or a plain and ordinary meaning of the term. Id. at 23. Petitioner does not provide its own construction of the term “associated digital signature.” Based on the arguments presented by the parties, we agree with Patent Owner that no explicit construction of this term is necessary to resolve the disputes between the parties.” slip op. at 14

  Patent outcomesUS 6,157,721 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,157,721
• Platform Science, Inc. v. XRS CorporationRehearing denied
  PTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19

  § 103 obviousness
  Patents in suitUS 10,255,575
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-00979 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted Dua-based combinations rendered any claim unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “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) (2020). Under that standard, we generally give claim terms 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. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have been knowledgeable regarding mobile payment methods and systems pertinent to the ’218 patent.” Pet. 11. Petitioner also contends that an ordinarily skilled artisan “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, which would have exposed them to concepts like GlobalPlatform and SmartMX” and that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. at 11–12 (citing Ex. 1003 ¶¶ 27–28). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 8,118,218
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-00978 · APJ Kristi L R Sawert · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted combinations teach or suggest the server-initiated fund transfer limitation in claims 1 and 9.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review. 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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’855 patent. Accordingly, we do not institute an inter partes review of all challenged claims of the ’855 patent on the grounds asserted in the Petition.” slip op. at 2

  • BurdenDenied

    “Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25

  • PTAB / AIA Trials › Discretionary denialNot reached

    “V. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 17–25.” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,448,855
• Cloudflare, Inc. v. Sable Networks, Inc.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-01005 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 25–27 were obvious over either asserted reference combination; claims 1–24 and 28–29 were disclaimed.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of claims 25–27, and Patent Owner disclaimed all other challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 2–3 years of academic or industry experience in computer networking.” Pet. 5 (citing Ex. 1003 ¶ 23). At this stage, Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’919 patent and the asserted prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that no express constructions are necessary for this proceeding. Pet. 5–6. Patent Owner proposes constructions for the claim term “individual micro-flow” (Prelim. Resp. 12–15) and the phrase “having a quality of service capable of supporting the quality of service of the plurality of micro-flows” (id. at 23–25). Based on the record before us, we do not find it necessary to expressly construe any claim terms or phrases in this Decision. 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 8

  • BurdenDecided for patent owner

    “b) Analysis “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio- Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). A petition must specify where each claim limitation is found in the cited references and must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (requiring “a detailed explanation of the significance of the evidence”). Here, Petitioner contends that Cheesman discloses “assembling the plurality of individual micro-flows into a second aggregate flow having a quality of service capable of supporting the quality of service of the plurality of micro-flows,” as required by claim 25, but the Petition does not identify where Cheesman discloses the italicized claim language, which we call the “QoS-capability limitation.” See Pet. 45. In addition, the Petition does not sufficiently explain why a person of ordinary skill in the art would have understood these claimed aspects to be taught or suggested by Cheesman. Thus, the Petition’s showing for this limitation is insufficient.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,012,919

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.