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  • Comcast Cable Communications, LLC v. Promptu Systems Corp.Institution denied
    PTAB · Oct 10, 2018 · CBM2018-00033 · APJ Karl D Easthom · CBM · Institution

    The Board denied institution of CBM review of claims 14–52, exercising discretion because Comcast advanced a conflicting claim construction in concurrent proceedings.

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

      “Petitioner argues the Board should not exercise its discretion to deny this CBM Petition based on the ’344 and ’345 Petitions, because “the grounds for unpatentability identified in this petition are different than the grounds for unpatentability identified in the IPR petitions—indeed, the grounds for unpatentability raised here are not permitted in an IPR proceeding,” and Patent Owner had “not yet filed a preliminary response to the pending IPR petitions challenging the ’196 Patent.” Pet. 4, n.1 (citing General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017) (identifying relevant factors)). Nevertheless, as Patent Owner argues, General Plastic cites a non-exhaustive list of factors. See Prelim. Resp. 5–6. Petitioner fails to explain why it filed this CBM 2 “Congress enacted § 112, ¶ 6, in response to Halliburton,” 329 U.S. at 1. Warner–Jenkinson Co. Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). Petition (filed April 2, 2018) about three and a half months after it filed the ’344 and ’345 Petitions (both filed Dec. 19, 2017) with competing claim construction arguments that impact central aspects of both trials. Petitioner’s implied argument that Congress only authorized certain grounds for inter partes reviews and limited other grounds to CBM reviews (e.g., § 112, ¶ 2), fails to explain sufficiently why the Board should entertain Petitioner’s new claim construction that potentially would impact central and major aspects of the concurrent ’344 and ’345 IPRs instituted based on a prior contradictory claim construction advanced by Petitioner.” slip op. at 10

    • Other 314aInstitution denied discretionary otherDenied

      “A potential consequence of instituting the instant CBM based on Petitioner’s arguments related to the scope issue raised by Patent Owner involves at least raising the related issue of whether to terminate the ’344 and ’345 IPRs. See BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013- 00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). Petitioner does not propose terminating the ’344 and ’345 IPRs in the event that we decide to institute the instant CBM proceeding. Without terminating the ’344 IPR and ’345 IPR, instituting the instant CBM proceeding based on Petitioner’s means plus function arguments would result in different Board panels proceeding under two contradictory claim constructions on a central issue––i.e., for the same claim term of the same patent, involving all of the challenged claims in the CBM and a slight majority of the collectively challenged claims in the ’344 and ’345 IPRs. The Board’s reviewing court disfavors conflicting “reasoning on a point . . . central to [the Board’s] analysis” absent an adequate explanation for the conflict. See Emerson Electric Co. v. Sipco, LLC, No. 2017-1866, 2018 WL 4145081, slip op. at *3 (Aug. 29, 2018 Fed. Cir.) (“Because the Board did not adequately explain its reasoning on a point that was central to its analysis and its conclusion on that point was contrary to another Board opinion on nearly identical facts, we vacate the Board’s determination as to the appealed claims and remand for further proceedings.”) (nonprecedential); Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017) (“[W]here a panel simultaneously issues opinions on the same technical issue between the same parties on the same record, and reaches opposite results without explanation, we think the best course is to vacate and remand these findings for further consideration.”). As noted above, Petitioner does not present an adequate explanation for the contradictory claim constructions. Whether a recitation constitutes a means-plus-function element does not depend on whether the claim is construed in an inter partes review or a covered business method patent review.” slip op. at 8

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

      “Accordingly, based on the particular circumstances involved as discussed above, we decline to decide whether to adopt Petitioner’s means plus function claim construction position asserted here. On one hand, if we decided to adopt it and institute a CBM review on that basis, concurrent trials would proceed on diametrically opposed claim construction positions––unless the panel in the ’344 and ’345 IPRs decided to terminate those trials based on our adoption of the diametrically opposed claim construction asserted here. At the least, even without a termination the ’344 and ’345 IPRs, the diametrically opposed positions would infiltrate the three proceedings and raise collateral issues, undermining the Board’s resources and effort “to secure the just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b). On the other hand, if we decide Petitioner’s showing here lacks sufficient support on the merits for purposes of a CBM review, a decision denying institution may serve to advise the parties on this limited record that Petitioner’s means plus function claim construction position in the ’344 and ’345 IPRs appears to be correct even though no final decision has been reached there yet.” slip op. at 11

    • BurdenNot reached

      “As presented, Petitioner advances the second and third theories of unpatentability as contingent upon not adopting its central argument that “program steps” represents a means plus function term. Because we do not decide the issue of whether “program steps” constitutes a means plus function term, we decline Petitioner’s invitation to investigate further its second and third contingent theories. In addition, given the prominence of the means plus function claim construction issue raised by the parties, in the event we were to decide to institute the instant CBM proceeding, the means plus function issue likely would dominate the CBM trial and may impact the ’344 IPR and ’345 IPR, as discussed above.” slip op. at 10

    Discretionary denial
    Patents in suitUS 7,047,196
  • Fedex Corporation v. Intellectual Ventures II LLCRehearing denied
    PTAB · Jul 17, 2018 · IPR2017-02030 · APJ Barbara A Parvis · IPR · Rehearing

    The Board denied Patent Owner’s rehearing requests, finding no overlooked or misapprehended basis to authorize a motion to terminate the reexamination.

    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 party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2

    • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

      “First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4

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

      “First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4

    Discretionary denial
    Patents in suitUS 8,494,581
  • Nikon Corporation v. ASML Netherlands B.V. And Carl Zeiss AGInstitution denied
    PTAB · Jun 4, 2018 · IPR2018-00220 · APJ David C Mckone · IPR · Institution

    The Board denied institution on all challenged claims: claims 1–13, 23–26, and 28 for failure to show a reasonable likelihood of success, and claims 14–17 in its discretion.

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

      “Our rules require Petitioner to set forth in the Petition “[h]ow the challenged claim is to be construed” and specifically state that “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(3). It is against this backdrop that we determine whether Petitioner shows a reasonable likelihood that it would prevail with respect to at least one challenged claim. In this case, Petitioner unambiguously takes the position that the terms “error utility software module,” “logic configured to recognize erroneous operation,” and “processing means for processing a user execution of an erroneous operation” are not amenable to construction because the specification of the ’792 patent does not describe sufficient structure corresponding to these terms. Pet. 12–21. Petitioner advances unequivocal, and uncontroverted, expert testimony supporting this position. Ex. 1015 ¶¶ 26–40. Because Petitioner’s arguments and evidence are directed to the contrary position, Petitioner does not establish that these three terms are capable of being construed. If Petitioner cannot show that these claim terms are amenable to construction, Petitioner cannot apply the features of the prior art to those terms, nor expect us to do so. Cf. In re Steele, 305 F.2d 859, 862–62 (CCPA 1962) (“As we have previously indicated, our analysis of the claims leaves us in a quandary as to what in fact is covered by them. We think the examiner and the board were wrong in relying on what at best are speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103 thereon.”). Therefore, Petitioner does not establish that it is reasonably likely to prevail in showing that claims 1, 6, 23, and 28 would have been obvious.” slip op. at 15

    • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

      “The Federal Circuit has “stated that the use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies” and that “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112, para. 6 does not apply.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (internal citations omitted). Because it recites “means,” the term “processing means” presumptively is in means-plus-function format. The terms “error utility software module” and “logic configured to recognize erroneous operation” presumptively are not. This presumption, however, is not “strong” and should not have the practical effect of “placing a thumb on what should otherwise be a balanced analytical scale.” Id. at 1349. “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. Petitioner argues that “error utility software module” is in means-plus- function format. Pet. 12–13.2 As Petitioner observes (id.), “‘[m]odule’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6” because it “is simply a generic description for software or hardware that performs a specified function.” Williamson, 792 F.3d at 1350. Petitioner argues that “this term’s limitations are all simply functions the module is supposed to perform and do not specify any structure for performing the recited functions.” Pet. 13. Petitioner’s expert testifies that “[t]hese recited limitations are purely functional and provide no structure for performing them” and that “[t]he term ‘software module’ does not convey to one of ordinary skill a definite structural meaning for performing the recited function.” Ex. 1015 ¶ 26. Similarly, Petitioner argues that “logic configured to recognize erroneous operation” is purely functional and does not specify structure for performing the recited function. Pet. 17. Dr. Essa’s testimony supports this argument. Ex. 1015 ¶ 36.” slip op. at 9

    • Other 314aInstitution denied discretionary otherInstitution denied

      “Petitioner’s means-plus-function arguments, detailed above. Nevertheless, if we were to institute a trial on claim 14 and its dependents, we also would have to institute on the challenged means-plus-function claims. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018) (The Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition.); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018), available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial. The result of institution would be a trial in which Petitioner contends that the majority of the challenged claims are not amenable to construction. Although Petitioner is not permitted to pursue a ground of indefiniteness in an inter partes review (see 35 U.S.C. § 311(b)), indefiniteness likely would be a significant issue for those claims going forward given Petitioner’s current posture and presentation of evidence. Institution of an inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under 35 U.S.C. § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). Because a trial on the challenged claims, including claims 14–17, likely would be dominated by issues of alleged indefiniteness of claims 1–6, 8–13, 23–26, and 28, we exercise our discretion to deny institution on all challenged claims and grounds.” slip op. at 18

    Claim constructionDiscretionary denialcites Phillips
    Patents in suitUS 6,972,792
  • Hamilton Beach Brands, Inc. v. F’Real Food, LLCRehearing denied
    PTAB · Apr 25, 2018 · IPR2017-00765 · APJ Lora M Green · IPR · Rehearing

    The Board denied Hamilton Beach’s rehearing request and maintained its denial of institution, citing follow-on petition concerns and its discretion under §§ 314(a) and 325(d).

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with those principles in mind.” slip op. at 2

    • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

      “The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5

    • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner

      “An important reason for denying institution in the instant proceeding was that Petitioner had the advantage of Patent Owner’s preliminary response in IPR2016-01105, as well as the claim construction and analysis set forth in the decision denying institution in that proceeding. That is, Petitioner had the benefit of that information in crafting the challenges set forth in the instant proceeding, and, thus, was able to address Patent Owner’s arguments made in its preliminary response in IPR2016-01105, as well as address the concerns of the Board set forth in the decision denying institution in IPR2016-01105. Consideration of these factors is consistent with the principles set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, 15−19 (PTAB Sept. 6, 2017) (Paper 19) (“General Plastics”) (designated precedential Oct. 18, 2017) (setting forth a non-exhaustive list of factors to be considered in determining whether to institute a follow-on petition, including whether the same petitioner previously filed a petition directed to the same claims of the same patent, and whether, at the time of filing of the second petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition). We noted further that Sato “was published nearly 30 years ago,” and Karkos issued on December 26, 2000. Dec. 11. We determined that Petitioner had not established that those references were not available to Petitioner when it filed the petition in IPR2016-01105. Id. We declined to provide a second chance merely because Petitioner’s “highly experienced searchers” did not find those references before the filing of the petition in IPR2015-01105. Id. (citing Pet. 6). That determination was another factor that informed our decision to exercise our discretion and decline to institute inter partes review in the instant proceeding. See, e.g., General Plastics at 16 (noting that other factors to be considered in granting a follow-on petition are whether at the time of filing of the first petition petitioner knew of the prior art asserted in the second petition or should have known of it, and whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent). Finally, we noted that we were “troubled by the implications of Petitioner’s overarching premise – that it is cost-effective and appropriate to wait for a claim construction and institution decision by the Board, and then launch a follow-on patent challenge in reliance on additional references that challenge the same patent claims already addressed by the Board.” Dec. 13 (citing Pet. 7‒8). As noted in the Decision denying institution, however, “[s]uch tactics increase the costs to Patent Owner and impose unnecessary demands on the finite resources of the Board.” Id.; see, e.g., General Plastics at 16 (noting another factor to be considered is the finite resources of the Board).” slip op. at 7

    • Other 314aInstitution denied discretionary otherDecided for patent owner

      “The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5

    Discretionary denial
    Patents in suitUS 7,520,658
  • Google LLC v. Uniloc Luxembourg S.A.Institution denied
    PTAB · Mar 29, 2018 · IPR2017-02067 · APJ Miriam L Quinn · IPR · Institution

    The Board denied institution: it declined review of claims 1–12, 14–17, 25, and 26 under §§ 315(d) and 325(d), and found no reasonable likelihood for claims 13, 18–24, and 27.

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

      “Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly. Moreover, the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses on September 9, 2017. Three days later Petitioner filed the instant petition. Petitioner, as the party with the knowledge of this fact, failed to allege that it did not gain the benefit of the preliminary responses in previous IPRs. We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here. Finally, although not a dispositive fact, we note that in the previous IPRs, Patent Owner requested authorization to file a motion to amend challenged claims of the ’433 patent. This fact raises concerns regarding the complexity and potential for inconsistency inherent in allowing this proceeding to occur in tandem with ongoing trials that arise in large part from the considerable role Zydney plays each proceeding. Further, we are concerned not only with ensuring consistency across multiple trials focused on Zydney, but also with administrative efficiency because significant resources of the Board would be consumed reconciling arguments, issues, and evidence across multiple, independent trials,3 especially in light of the forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).” slip op. at 9

    • Other 314aInstitution denied discretionary otherDenied

      “authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter[, i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination or any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in a manner consistent with securing the just, speedy, and inexpensive resolution of the proceeding (37 C.F.R. § 42.1(b)). Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly.” slip op. at 9

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

      “likelihood of prevailing with regard to its contention that claim 13 is anticipated by Zydney. In particular, we find that Petitioner has failed to show that Zydney’s software agent “displays a selectable control for generating an instant voice message using an intercom mode.” This is an anticipation challenge, which requires that the art disclose each and every limitation of the claim, in the same arrangement as claimed. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 16

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

      “Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 17

    Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
    Patents in suitUS 8,995,433
  • Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing denied
    PTAB · Feb 15, 2018 · IPR2017-01969 · APJ Patrick M Boucher · IPR · Rehearing

    The Board denied ESET’s rehearing request, leaving in place denial of its petition and joinder motion because the added grounds, evidence, and arguments weighed against joinder.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “To the extent that ESET has identified matter that we misapprehended or overlooked, we have reconsidered our Decision. In doing so, we exercise our discretion in accordance with the mandate that our regulations “be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 1(b). For the reasons expressed above, consideration of the full scope of relevant factors continues to weigh against granting ESET’s Petition or Joinder Motion. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that ESET’s Rehearing Request is denied.” slip op. at 9

    • Other 314aInstitution denied discretionary otherInstitution denied

      “discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly because ESET’s Petition presents arguments that differ materially from those presented in the original Blue Coat petition upon which the 1444 proceeding was instituted, and because ESET’s Rehearing Request introduces additional shifts in those arguments. In addition, we are mindful of the equities resulting from the procedural history, in which Patent Owner repeatedly finds itself defending its patent, in the same proceeding, against new petitioners who rise up to replace those with whom it has settled.” slip op. at 5

    • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

      “discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly” slip op. at 5

    • Strike new argumentNew argument disregardedDecided for patent owner

      “Third, ESET introduces still further additional evidence with its Rehearing Request to support its argument that Necula is not prior art. Specifically, ESET provides a copy of a Markman Order entered in related litigation between Patent Owner and ESET, asserting that it “should inform this Board’s determination of an appropriate Phillips-type construction.” Req. Reh’g 2; Ex. 1028. It is axiomatic that we could not have misapprehended or overlooked the relevance of this evidence in our Decision when the evidence was not previously of record in the proceeding. “A request for rehearing is not an opportunity for a party to introduce new argument, bolster insufficient argument, or mend gaps in the evidence relied on in the Petition.” Ericsson Inc. v. Intellectual Ventures II LLC, Case IPR2015-01872, slip op. at 4 (PTAB Apr. 19, 2016) (Paper 15). Notably, the Markman Order that ESET only now brings to our attention was entered in the related litigation on November 14, 2017, but ESET took no steps to bring it to our attention during the several weeks that passed before our Decision was entered—even though ESET urges that it “should inform this Board’s determination.” Although the district court’s order is relevant, it comes too late as evidence in this proceeding for us to consider it.” slip op. at 8

    Discretionary denial
    Patents in suitUS 8,079,086
  • Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
    PTAB · Jan 12, 2018 · IPR2017-00780 · APJ James A Worth · IPR · Rehearing

    The Board denied the petitioner’s rehearing request, finding no overlooked or misapprehended arguments concerning the denied grounds for claims 9, 10, 12–19, and 38.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

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

      “The panel addressed Petitioner’s theory of modifying Radermacher’s teachings with Kenna’s teachings on, inter alia, pages 20–21 of the Decision, as referred to by Petitioner immediately above. Id.; see also id. at 16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21. Accordingly, we conclude that the Decision did not misapprehend or overlook any arguments in the Petition.” slip op. at 5

    § 103 obviousnessDiscretionary denial
    Patents in suitUS 8,062,302
  • Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
    PTAB · Jan 12, 2018 · IPR2017-00779 · APJ James A Worth · IPR · Rehearing

    The Board denied Smith & Nephew’s rehearing request, leaving in place the denial of institution on claims 9, 10, 12–19, and 38.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

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

      “an inter partes review of claims 1–3, 5–8, 11, 20, 21, 24, 25, 28–37, 39–43, 47, and 95–125 as obvious over Radermacher, Alexander, and Woolson, and denied institution of the remaining grounds presented in the Petitions. Dec. 1, 3, 6, 39–40. For example, we found that Petitioner had failed to make a threshold showing that claims 13, 18, and 38 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, Woolson, and Kenna, or over the combination of Radermacher, Fell, Woolson, and Kenna. See id. at 16–23. Additionally, we found that Petitioner had failed to make a threshold showing that claims 9, 10, and 12 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, and Woolson. See id. at 23–24. We also found that Petitioner had failed to make a threshold showing that claims 14–17 and 19 of the ’302 patent are unpatentable under” slip op. at 2

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

      “16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21.” slip op. at 6

    § 103 obviousnessDiscretionary denial
    Patents in suitUS 8,062,302
  • Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
    PTAB · Jan 12, 2018 · IPR2017-00778 · APJ James A Worth · IPR · Rehearing

    The Board denied rehearing, leaving in place the institution decision that instituted review of some claims and denied the remaining grounds, including challenges to claims 9, 10, 12–19, and 38.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

    Discretionary denial
    Patents in suitUS 8,062,302

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.