Cisco Systems, Inc. et al. v. Hewlett Packard Enterprise Co.
Docket No. 2022-2290, 2023-1183 (PR2021-00593, IPR2022-00081, IPR2022-00084)
DYK, REYNA, STOLL
August 16, 2024
Non-Precedential
Brief Summary: FC panel vacated PTAB no obviousness decision vacated as specific benefit is not necessary for a motivation to combine and fact-based analysis was based only on attorney argument rather than evidence.
Summary: This is a nonprecedential opinion regarding the validity of K.Mizra’s U.S. Patent No. 8,234,705 relating to a system for protecting networks from infected devices by quarantining the devices and providing limited access to a remediation server.
The primary issue on appeal was whether the Patent Trial and Appeal Board (PTAB) correctly determined that Cisco failed to demonstrate the obviousness of certain claims of the ’705 patent. The PTAB had ruled against Cisco, finding that Cisco did not adequately establish a motivation to combine two prior art references, Gleichauf and Lewis, in a way that would render the patent claims obvious.
The Federal Circuit found that the PTAB made several errors:
- Legal Error: The PTAB improperly focused only on benefits-based motivations to combine the prior art references, ignoring Cisco’s non-benefits-based motivations. The court noted that under the KSR and Intel cases, a rigid requirement to show a specific benefit is not necessary for a motivation to combine, and this was not properly considered by the PTAB.
- Procedural Error: Cisco argued that the PTAB improperly considered an argument raised by K.Mizra for the first time in a sur-reply, which Cisco claims violated procedural rules. However, the court did not find this argument persuasive because Cisco did not raise an objection during the PTAB proceedings.
- Factual Error: The PTAB’s finding that Gleichauf’s notification messages could be displayed in a browser using XML was not supported by substantial evidence. The court agreed with Cisco that this finding was erroneous and based only on attorney argument rather than evidence.
The FC panel vacated and remanded the PTAB’s with instructions to reconsider the motivation to combine the prior art references, including Cisco’s non-benefits-based arguments. The court also vacated the PTAB’s overall conclusion that Cisco failed to prove the claims’ unpatentability and required the PTAB to address the remaining issues regarding the obviousness of the challenged claims.