- Opensky Industries, LLC v. VLSI Technology LLCInstitution deniedPTAB · Dec 23, 2021 · IPR2021-01056 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR on claims 1–3, 5, 6, 9–11, and 13 because Petitioner likely could not produce its relied-upon expert for cross-examination.
RulingsInstitution decision- BurdenInstitution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“trial is instituted. Prelim. Reply 9. That suggestion, however, stands at odds with Dr. Singh’s agreement to work exclusively with PQA. See IPR2021-01229, Ex. 1033 (declaration describing PQA’s engagement of Dr. Singh), Ex. 1034 (engagement agreement between PQA and Dr. Singh). Petitioner submits that because Dr. Singh submitted his declaration in the Intel IPR and in the PQA IPR, “[i]t is unfathomable that a witness who submits two declarations would refuse to testify.” Prelim. Reply 10. But that argument ignores that Dr. Singh has agreed to work exclusively with PQA, which has not given any indication that it would release Dr. Singh from his agreement. Moreover, we have no evidence from Dr. Singh that he would be willing to testify here. Without some factual support to demonstrate that it reasonably expects Dr. Singh to cooperate, in light of the exclusive agreement with PQA, Petitioner’s assertion is speculation and does not demonstrate sufficiently that Dr. Singh would likely participate in this proceeding. Petitioner challenges PQA’s assertion of its exclusive agreement with Dr. Singh as “vague and ethically questionable” (id. at 9–10). This is more speculation. As noted above, PQA has produced its agreement with Dr. Singh (IPR2021-01229, Ex. 1034) and we have no basis to question the agreement’s legitimacy. Petitioner allowed this unusual situation by relying on a prior declaration by Intel’s expert, rather than retaining its own expert for a new declaration. Whether the agreement with Dr. Singh complies with ethical rules and whether it permits Dr. Singh to testify here are matters not before us. Moreover, they may present issues of contract law for the courts to decide, which may cause delay and prevent us from meeting our statutory deadlines, were we to institute a trial with the issues unresolved.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
Discretionary denialPatents in suitUS 7,523,373 - Netskope, Inc. v. Bitglass, Inc.Institution deniedPTAB · Dec 14, 2021 · IPR2021-01046 · APJ Kevin C Trock · IPR · Institution
The Board denied institution on all challenged claims because Netskope did not justify filing a second petition challenging the patent with the same prior art.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“We agree with Patent Owner, that on this record, two petitions from Petitioner challenging the claims of the ’090 patent are not warranted. First, as Patent Owner points out, and we have noted, Petitioner has not provided us with any explanation as to why multiple petitions are necessary, despite the guidance in the TPG. See TPG 59–61. As such, we are left with no justification for the two petitions from Petitioner to weigh against Patent Owner’s arguments. Second, we do not discern, based on our own review of the petitions, why one petition would not have been sufficient to challenge the claims of the ’090 patent, given the substantial overlap in the subject matter of the claims. The ’090 patent has three independent claims. Ex. 1001, 13:55– 18:22. Claim 1 is written as a method claim, claim 9 is written to cover “[a] non-transitory computer readable medium” storing software instructions of the method of claim 1, and claim 17 is written as a system implementing the method of claim 1. Id. at 13:56–14:19, 14:65–15:30, 16:22–60. The claims depending from these independent claims recite similar subject matter. As Patent Owner argues, Dr. Franz’s testimony is repetitive, often referencing analysis directed to claim 1 and its challenged dependent claims in analyzing claim 17 and its challenged dependent claims. See Prelim. Resp. 8–16.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“III. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated a need for multiple petitions to challenge the claims of the ’090 patent and we exercise our discretion under 35 U.S.C. § 314 to deny the petition requesting inter partes review in IPR2021-01046. IV. ORDER Accordingly, it is ORDERED that an inter partes review is not instituted as to all challenged claims on the grounds raised in the petition.” slip op. at 14
Discretionary denialPatents in suitUS 10,757,090 - Netskope, Inc. v. Bitglass, Inc.Institution deniedPTAB · Dec 14, 2021 · PGR2021-00092 · APJ James J Mayberry · PGR · Institution
The Board denied institution of PGR on claims 17–20 and 22–24, exercising discretion under § 324(a) because the parallel petitions were not justified.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“We may not institute a post-grant review “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.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we exercise our discretion to deny the Petition.” slip op. at 2
- Parallel petitionsInstitution denied discretionary otherDenied
“We agree with Patent Owner that two petitions challenging the claims of the ’671 patent are not warranted under these circumstances. First, as Patent Owner argues, Petitioner has provided us with no explanation as to why multiple petitions are necessary here, despite our guidance in the CTPG, which states that such an explanation should be provided at the time the multiple petitions are filed. See CTPG 59–61. As such, we are left with no justification for the two petitions from Petitioner to weigh against Patent Owner’s arguments. Second, we do not discern, based on our own review of the petitions, any reason why one petition would not have been sufficient to challenge the claims of the ’671 patent, given the substantial overlap in the subject matter of the claims. The ’671 patent has three independent claims. Ex. 1001, 13:61–17:9. Claim 1 is written as a method claim, claim 9 is written to cover “[o]ne or more non-transitory computer-readable storage media” storing instructions of the method of claim 1, and claim 17 is written as a system implementing the method of claim 1. Id. at 13:65–14:17, 15:1–22, 16:12–38. The claims depending from these independent claims recite similar subject matter. Compare, e.g., 14:51–53 (claim 7), with 15:60–63 (claim 15) and 16:42–44 (claim 19) (reciting subject matter directed to the identity provider monitoring the operating status of the application proxy server).12 As Patent Owner argues, Dr. Franz’s testimony is repetitive, often referencing analysis directed to claim 1 and its challenged dependent claims in analyzing claim 17 and its challenged dependent claims. See, e.g., Ex. 100213 ¶¶ 140, 141, 143–146 (referencing the analysis of elements of claim 1 for elements of claim 17), ¶¶ 147–149 (referencing the analysis of claims 4 and 5 for claims 22 and 18/23). We recognize that Petitioner challenges the priority date of the ’671 patent. See Pet. 16–23; CTPG 59 (indicating a priority date dispute could justify multiple petitions). Also, one set of grounds depends, in part, on the priority date of the Challenged Claims. See Pet. 96–120 (challenging claims based on a reference in the priority chain of the ’671 patent). Petitioner does not, however, differentiate its petitions based on this issue—both petitions have identical grounds, most of which do not turn on the priority date of the Challenged Claims. See Prelim. Resp. 13–14 (“[A]lthough there is a priority 12 Additional overlap exists—as evidenced in a comparison of the combined recitations of claims 18 and 23 with claims 5 and 13, claim 19 with claims 7 and 15, claim 20 with claims 8 and 16, claim 22 with claims 4 and 12, and claim 24 with claims 6 and 14. Ex. 1001, 13:61–17:9. 13 Ex. 1002 is the same exhibit filed in both PGR2021-00091 and PGR2021- 00092. See Ex. 1002, title page. issue raised by the Petition, the Petitioner is not proposing alternate grounds based on different priority dates of the patent claims. Both petitions raise the same ground and have the same exact prior art combinations.”). Thus, the particular circumstances of this proceeding do not appear to warrant multiple petitions.” slip op. at 22
Discretionary denialPatents in suitUS 10,855,671 - Microsoft Corporation v. D3d Technologies, Inc.Institution deniedPTAB · Dec 2, 2021 · IPR2021-00877 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution on claims 1–4, 6–9, and 11–21 because the second parallel petition did not show material differences sufficient to justify another review.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Having reviewed all Petitioner’s challenges, we are unable to discern any material difference between the parallel petitions that would be sufficient to outweigh the inefficiencies and costs to the Board and Patent Owner that would result from instituting on both parallel petitions. The mere fact that Petitioner may have had additional art to assert does not, on these facts, justify the additional burden of a second petition directed to the same claims. In view of the above, Petitioner has not adequately explained why the Petition in this proceeding contains sufficient material differences in its analysis to support instituting an additional inter partes review of the challenged claims. Accordingly, because we institute inter partes review of claims 1–9 and 11–21 of the ’691 patent on the grounds presented in the IPR2021-00878 petition, we exercise our discretion under § 314(a) to deny institution in this proceeding.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Section 314(a) does not require the Director to institute an inter partes review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an” slip op. at 2
Discretionary denialPatents in suitUS 9,980,691 - Apple, Inc. v. Koss CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00686 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution of IPR on all challenged claims because two petitions were unnecessary and the General Plastic factors did not justify the follow-on petition.
RulingsInstitution decision- Parallel petitionsDenied
“To that end, the CTPG states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)). “Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation,” although even then, granting two petitions “should be rare.” See id.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Nevertheless, Petitioner’s stated reason for filing two petitions is that it could not challenge the large volume of asserted claims in one petition, not that it became aware of the prior art after filing the ’381 IPR petition. The implication is that Petitioner was ready to challenge those claims (and aware of the basis to do so) but for limitations on briefing space. As further evidence of Petitioner’s early knowledge of the prior art, Patent Owner argues that Petitioner was aware of Seshadri-818 and other references by the same inventor at least as early as January 2021, when Petitioner served invalidity contentions with those references in the District Court case. Prelim. Resp. 25 (citing Ex. 2023). Patent Owner further argues that Petitioner was aware of Seshadri at least as early as February 22, 2021, when it filed IPR2021-00546 advancing Seshadri as a reference. Id. at 26. Logically, Petitioner would have been aware of those references even earlier, as it would have spent significant time preparing its invalidity contentions and the Petition. In light of the evidence that Petitioner likely was aware of Seshadri before the filing of the Petition in March 2021, along with Petitioner’s silence as to its knowledge, this factor weighs against institution.” slip op. at 16
Discretionary denialPatents in suitUS 10,491,982 - Decurtis LLC v. Carnival CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00782 · APJ Neil T Powell · IPR · Institution
The Board denied institution under § 314(a), finding no reasonable likelihood of prevailing on claims 1–18 and 20 and declining to reach claim 19.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) for the ʼ184 patent is a person with a Bachelor of Science degree in electrical engineering, computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field. Pet. 7 (citing Ex. 1002 ¶¶ 42–43). Petitioner elaborates that “more experience would compensate for less formal education, and vice versa.” Id. Patent Owner has not provided an assessment of the level of ordinary skill in the art. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Almeroth Declaration and is consistent with the ’184 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM INTERPRETATION The Petition explains that “Petitioner and its expert have applied the plain and ordinary meaning of all claim terms of the challenged claims.” Pet. 8. In its Preliminary Response, Patent Owner does not propose any explicit claim constructions. We do not discern a need to construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“limitation 1[d] means Barry inherently discloses limitation 1[d], Petitioner also does not support that position. Establishing inherent disclosure of a limitation requires showing that the limitation necessarily results from the prior art disclosure. Continental Can Co. v. Monsanto Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities.”). Petitioner does not allege or demonstrate that a “unique identifier of a portable guest device” necessarily results from the disclosure of Soleimani’s paragraph 175, much less that such an identifier is necessarily associated with location and a timestamp. As noted above, the Petition states that “[i]dentifiers may be associated with location and timestamp.” (Pet. 26 (emphasis added)). Because Petitioner does not support its position that “Barry discloses” limitations 1[d] and 7[d] and does not argue that limitations 1[d] and limitation 7[d] would have been obvious, Petitioner does not demonstrate a reasonable likelihood of prevailing on Ground 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent argues that Petitioner does not show sufficiently that a person of ordinary skill in the art would have combined the references’ teachings. Patent Owner first argues that Petitioner has not demonstrated a motivation to combine Berg with Soleimani. Prelim. Resp. 31–33. Patent Owner then argues that Petitioner has not demonstrated a motivation to modify Soleimani with the teachings of Brulé. Id. at 34. With respect to this issue, weighing the parties’ arguments, we see some merit in Petitioner’s arguments that a person of ordinary skill in the art would have been motivated to combine the teachings of Soleimani, Berg, and Brulé. We do not further address the merits of Petitioner’s challenge to claim 19. As explained below in Section III, given that Petitioner fails to show a reasonable likelihood of prevailing with respect to nearly all of the challenged claims, we exercise our discretion not to institute inter partes review.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,045,184 - Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.Institution deniedPTAB · Sep 21, 2021 · IPR2021-00621 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution on all challenged claims because the petition failed to show a reasonable likelihood of success on at least 18 claims, and review of all 19 would be inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“the monitored toolface angle, in and of itself, is indicative of a difference between the actual and desired toolface orientations as required by limitation 1[a]. Although Petitioner and Mr. Sharma point to comparing the monitored toolface angle with the tool face angle selected to achieve a desired trajectory for the bore hole, they do not identify any such comparison disclosed in Haci. Nor do they identify adequately any disclosure that Haci’s system displays or otherwise provides both the desired and measured toolface angles to the driller such that the measured toolface angle display, in conjunction with a desired toolface angle display, is indicative of the difference therebetween. At best, Petitioner and Mr. Sharma assert that the measured toolface angle could be used by the driller to determine the difference between the actual and desired toolface angles. Claim 1, however, requires the drilling operation parameter itself, which Petitioner maps to the measured toolface angle, to be indicative of the difference between the actual and desired toolface orientations.” slip op. at 21
- Other 314aInstitution denied discretionary otherInstitution denied
“institute review or don’t.” SAS, 138 S. Ct. at 1355. When a petition fails to meet the reasonable likelihood standard as to some challenges, the Board evaluates “all the challenges and determine[s] whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide 64 (citing 37 C.F.R. §§ 316(b), 326(b)). In determining whether to institute in circumstances such as those presented here, we take into account the efficient use of the Board’s time and resources. See Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (designated informative); Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (designated informative).” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the record, we determine that no explicit construction of terms is needed to resolve the issues presented to reach a decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,823,655 - BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution deniedPTAB · Sep 7, 2021 · PGR2021-00060 · APJ Ryan H Flax · PGR · Institution
The Board denied institution because the petition did not show claims 1–7 likely unpatentable, and a possible § 112(a) issue for claims 8–9 did not justify instituting on all claims and grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not demonstrated with particularity that it is more likely than not that most claims challenged in the petition are unpatentable under the asserted grounds. Although there is a reasonable argument that claims 8 and 9 may be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis is applicable to only these two dependent claims under a single ground for unpatentability, leaving Petitioner’s other ten grounds insufficient regarding independent claim 1 and dependent claims 2–7. As discussed above, instituting trial under these circumstances would not be an efficient use of the Board’s or the parties’ time and resources. See Chevron, IPR2018- 00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage derives from our review of the record presented. In accordance with the Court’s decision in SAS (138 S. Ct. at 1359– 60) and Office guidance, we deny institution of a post-grant review of the challenged claims of the ’631 patent on any grounds alleged by Petitioner. This decision does not reflect a final determination on the patentability of any claim.” slip op. at 66
- Other 314aInstitution denied discretionary otherInstitution denied
“Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.”). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53– 63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).1 We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1–7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board’s or the parties’ time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S. Ct. at 1359–60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“to read the concept of “flush with” into the claims. We agree with Petitioner’s position that such an interpretation is not supported by the ’631 patent’s written description, which illustrates and describes two embodiments, each having a turbine engine and reduction gearbox configured to be flush with one another, but refers to only the configuration of Embodiment 1 as being “directly connected” and refers to the configuration of Embodiment 2 as being merely “connected.” See Ex. 1001, 5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert witness confirming there is a difference between merely “connected” and “directly connected”). Thus, the intrinsic record supports a conclusion that the concept of “directly connected” is not related to whether one component is “flush with” another component. This disclosure of the ’631 patent also illuminates the meaning of “directly connected.” As shown in Embodiment 2, something may be connected with another thing even if there are intervening components, e.g., a transmission shaft or coupling; however, as shown in Embodiment 1, the ’631 patent uses the term “directly connected” only where no such intervening components are disclosed. Ex. 1001, 5:15– 6:19, Figs. 2, 3. Besides the guidance provided with respect to the embodiments discussed above, the ’631 patent does not otherwise expressly define the term “directly connected.” See generally Ex. 1001. Thus, we consider what the ordinarily skilled artisan would consider to be its ordinary and customary meaning. In this respect, Patent Owner also uses the word “uninterrupted” to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001 ¶¶ 61–71. We conclude based on this record that the concept of “uninterrupted” is more apt than the concept of “flush with,” and find it to be a better description for the ordinary and customary meaning of “directly connected.” For example, the ’631 patent describes, in Embodiment 1, “the turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27 (emphasis added). However, it is without question that Embodiment 1 positions a reduction gearbox between the turbine engine and plunger pump; thus, the engine and pump may be connected, but they are not directly connected. See, e.g., Fig. 2. On the other hand, regarding this same Embodiment 1, the ’631 patent describes that “the turbine engine 19 is directly connected to an input end of the reduction gearbox 24,” and there are no components illustrated or described as being between the turbine engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The connection between the turbine engine and reduction gearbox shown in Embodiment 1 is more aptly described as being uninterrupted. Thus, this illuminates the meaning of “directly connected.” In view of the above, we ascribe to the term “directly connected” its ordinary and customary meaning as it would have been understood by a person of ordinary skill in the art, and we find that ordinary and customary meaning to require that the turbine engine and reduction gearbox are connected with nothing intervening there-between so that their connection is uninterrupted.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s evidence shows that the Apollo 1 apparatus has two gearboxes and a clutch between its turbine engine and plunger pump, thus the Apollo 1 does not meet the claim limitation “the plunger pump is a plunger pump integrated with a reduction gearbox, the turbine engine is directly connected to an input end of the reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained by Mr. Zhang11 as having these two gearboxes and clutch, where at least one of the gearboxes and the clutch forecloses the system from having a single reduction gearbox that is both integrated on a pump and directly connected to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and, notably never attempted to explain exactly what is shown in the above-reproduced photograph from its own Exhibit 1017, even when given the opportunity to address Mr. Zhang’s testimony in its Reply. See generally Reply.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 10,865,631 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. 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. Under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801
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.