- Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01108 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1–3, 7–9, 13–17, 19, 20, 25, and 33–35 under § 325(d), finding the same arguments were previously presented and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in both of the asserted grounds.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Decided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference the ’886 provisional, and (3) the amendments adding the subject matter from the ’886 provisional improperly introduced new matter. Pet. 18−30.” slip op. at 23
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,529,768 - Juniper Networks, Inc. / Brocade Communications Sys., Inc. et al. v. Mobile Telecommunications Technologies, LLCRehearing deniedPTAB · Mar 14, 2018 · IPR2017-00642 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution denied because Jasinski had been substantively considered during examination and no explicit examiner error was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. REQUEST FOR REHEARING A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“reading of § 325(d). Although a petition for inter partes review may assert grounds of unpatentability based on prior art patents or printed publications cited during examination, the Board is not compelled to institute on any ground relying on previously presented prior art or arguments.8 For instance, § 325(d) provides that we may take into account whether, and “reject the petition” because, the same or substantially the same prior art was previously presented to the Office. Therefore, applying the discretionary authority regarding institution appropriately may result in a denial of all grounds based in whole or in-part on prior art that was previously evaluated during examination. Petitioner does not direct us to any statutory language or other binding legal authority that curtails the Director’s authority to deny 8 Although we address here the applicability of § 325(d), not § 314(a), Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016), is instructive: “the PTO is permitted, but never compelled, to institute an IPR proceeding.” review only in the circumstances where an Examiner’s rejection and the petition’s ground of unpatentability are identical.9 Accordingly, it is within our statutory authority to exercise discretion and deny the Petition on all grounds based on Jasinski once we deem Jasinski to have been presented to the Office during examination.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS A. REQUEST FOR REHEARING A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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 4 With regard to the ground based solely on Thro, we determined that the Petition failed to show that Thro discloses the “dynamically reassigning” limitation. Dec. 1315. That determination is not part of the request for rehearing, and, therefore, we do not discuss it further.” slip op. at 7
- BurdenDecided for patent owner
“As we stated above with regard to the Previous Evaluation (Third) factor, Office procedures require that Office Actions focus on reasons for rejection, rather than reasons for why a reference does not anticipate or render obvious the pending claims. Consistent with the Office’s need to provide streamlined examination and to utilize Office resources effectively, a petitioner must articulate error in the Examiner’s evaluation of the previously considered prior art. A showing of error in examination allows us to focus our resources on those matters that warrant reconsideration. Showing an Examiner was silent regarding application of the prior art to a claim in an Office Action, where the same reference was applied to other claims in the same Office Action, is not a showing of error. First, as stated above, an Examiner is charged with applying the best prior art to all of the claims. In that vein, absent evidence to the contrary, it is reasonable to conclude that an Examiner who follows Office procedure, and with evident knowledge of Jasinski, would have applied it to claim 1, if it had been proper to do so.11 We decline to assume the contrary, as Petitioner urges we do, that non-action by the Examiner is error merely because Petitioner presents the non-rejected claim mapped, in whole or in part, to the previously considered art. Instead of assuming that the Examiner failed to consider Jasinski, we have concluded that the omission of a Jasinski rejection as to claim 1, when Jasinski was applied to other claims, is an” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 5,590,403 - Juniper Networks, Inc. / Brocade Communications Sys., Inc. et al. v. Mobile Telecommunications Technologies, LLCInstitution deniedPTAB · Jul 27, 2017 · IPR2017-00642 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution: it declined the Jasinski-based grounds under § 325(d) and found no reasonable likelihood that claim 10 was obvious over Thro.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“When evaluating whether the same or substantially the same prior art or arguments previously were presented to the Office under section 325(d), we have considered some of the following non-exclusive factors: 1) The similarity of the asserted art and the prior art involved during examination; 2) The extent to which the asserted art was considered during examination, including whether the prior art was the basis for rejection; 3) The cumulative nature of the asserted art and the prior art considered during examination; 4) Whether Petitioner has pointed out sufficiently how the Examiner erred in its consideration of the asserted prior art; 5) The extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or the applicant’s arguments during examination; and 6) The extent to which additional evidence and facts presented in the” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“58−86. We do not agree with Petitioner at least with regard to the “dynamically reassigning” limitation. The claim requires that the recited reassignment is made “as a function of the messages to be communicated in an area.” Ex. 1001, 34:52−53. Petitioner points to Thro’s disclosure of “where-are-you” messages as teaching the limitation. Pet. 84. According to Petitioner, a dynamic reassignment is triggered in Thro “via ‘where-are-you’ messages sent to exemplary remote stations A and B to [e]nsure remote station location information does not become stale.” Id. This contention is not supported sufficiently by the record.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“58−86. We do not agree with Petitioner at least with regard to the “dynamically reassigning” limitation. The claim requires that the recited reassignment is made “as a function of the messages to be communicated in an area.” Ex. 1001, 34:52−53. Petitioner points to Thro’s disclosure of “where-are-you” messages as teaching the limitation. Pet. 84. According to Petitioner, a dynamic reassignment is triggered in Thro “via ‘where-are-you’ messages sent to exemplary remote stations A and B to [e]nsure remote station location information does not become stale.” Id. This contention is not supported sufficiently by the record.” slip op. at 13
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 5,590,403 - Robert Bosch Tool Corporation v. Sd3, LLCInstitution deniedPTAB · Mar 22, 2017 · IPR2016-01754 · APJ Scott A Daniels · IPR · Institution
The Board denied institution under § 325(d), finding the petition presented substantially the same prior art and arguments previously considered during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“similarities between the prior art references presented here, in this Petition, as compared to the prior art substantively considered by the Examiner, we determine that the evidence weighs in favor of a determination that the prior art asserted in the Petition was previously considered by the Office. We are persuaded that the prior art of Nieberle, either in view of the knowledge of one of ordinary skill in the art or Bielinski, and Lokey, either in view of the knowledge of one of ordinary skill or Bielinski, as asserted in this proceeding in grounds 1–4 against claims 1–8 and 10–17 are “the same or substantially the same prior art” as that specifically relied on and considered substantively by the Examiner, and overcome by Applicant, during prosecution of the underlying patent application. See 35 U.S.C. § 325(d).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“machine safety would have known could achieve the claimed speed and distance. This testimony, following his desired acceleration calculation however, fails to state affirmatively that it was even possible by explosive devices and capacitors to achieve the claimed time and distance performance characteristics asserted in the calculation. More importantly, Mr. Main’s testimony fails to persuasively explain how any known explosives or capacitors available to one of skill in the art at the time of invention, would have achieved such an acceleration and a mechanical actuation of the “moveable component 1/32nd of an inch within approximately 3 milliseconds or less after the dangerous condition is detected” as called for in claims 1, 13, and 16 of the ’279 patent. By way of another example, Mr. Main’s declaration refers to a spring loaded actuator disclosed by Bielinski, the secondary reference combined with Nieberle in ground 2, and asserts that it “could have provided sufficient energy (depending on size, etc.), and it would have been obvious to use it.” Ex. 1003 ¶ 258. Even assuming that Mr. Main is forthrightly stating that the “sufficient energy” developed by Bielinski’s actuator could actuate a moveable member to move 1/32nd of an inch in 3 milliseconds or less, nowhere in his declaration can we find that Mr. Main provides any persuasive technical reasoning or analysis to support this allegation. Id. (citing Ex. 1003, V.B.9).” slip op. at 18
- PTAB / AIA Trials › §315(b) time barNot reached
“IV. CONCLUSION We conclude that the facts and evidence do not establish a sufficient or persuasive reason for the Board to again consider the same prior art, the same claims, and substantially the same arguments as substantively considered in the examination of the application leading to the ’279 patent. Further, because we are guided by our analysis above to exercise our discretion in this threshold matter under 35 U.S.C. § 325(d) and deny institution in this case, we need not reach a different threshold issue raised by Patent Owner in their Preliminary Response, that is whether Petitioner is time-barred by an ITC investigation, (Inv. No. 337-TA-965), under 35 U.S.C. § 315(b).” slip op. at 21
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,011,279 - Front Row Technologies, LLC v. MLB Advanced Media, L.P.Institution deniedPTAB · Mar 25, 2016 · IPR2015-01932 · APJ Scott A Daniels · IPR · Institution
The Board denied institution on all challenged claims, finding substantially the same art and arguments had been considered under § 325(d) and the remaining obviousness grounds lacked a sufficient combination analysis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“It is uncontroverted that the same prior art references, Brett and Silberschatz, were presented to and considered by the Office. See Ex. 3007; see also Pet. 18 (“The August 2, 2013 Final Rejection maintained the Examiner’s rejection of claims 1, 3–4, 6–10, 12–15, 17–18, and 20–22 as being unpatentable over Silberschatz in view of Brett.”). The question resolves, therefore, on whether the Examiner overlooked certain disclosures in Brett that, in combination with Silberschatz, are relevant to and render obvious the definition for a best unassigned seat being “set by the ticket seller,” as recited in the independent claims.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“. . . with particularity . . . the grounds on which the challenge to each claim is based.” 35 U.S.C. § 312(a)(3). Petitioner has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The Petition must include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence. 37 C.F.R. § 42.22(a). The Petition must include a statement of the relevance of the evidence to the challenge raised. 37 C.F.R. § 104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. “Thus, we will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8). It is Petitioner’s responsibility “to explain specific evidence that support its arguments, not the Board’s responsibility to search the record and piece together what may support Petitioner’s arguments.” Dominion Dealer Solutions, LLC v. Autoalert, Inc., Case IPR2013-00225, slip op. at 4 (PTAB Oct. 10, 2013) (Paper 15).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Brett and Silberschatz. Pet. 26–27, 43–45. Petitioner does not identify in the Petition, however, any differences between the prior art including Austin, and the claims at issue, or provide a substantive analysis of why or how a person of ordinary skill in the art would have modified the prior art to render the claims obvious. See Unigene Labs., 655 F.3d at 1360. As a basis for the combination with Austin, Petitioner asserts that “it would have been obvious . . . to utilize a ticket selling device in place of a ticket seller.” Pet. 26. This is not persuasive reasoning or even a motivation to combine Austin because Brett already utilizes various ticket selling devices such as internet servers and internet sites that communicate with a user via personal computers, telephones, televisions, and satellite communications. Ex. 1005 ¶ 0078, Fig. 1. With respect to Petitioner’s assertion that “ticket brokers” are “ticket sellers” who can determine a “best available seating arrangement” (Ex. 1007, 1:13), Brett already teaches that a seller is capable of ranking priority rights to seats and then selling the seats based on such ranking. See id. ¶ 0009. Petitioner’s nomenclature comparison is not persuasive of a substantive difference between the prior art references nor a sufficient articulated reason based on evidentiary underpinnings to combine the references. Moreover, Petitioner’s contentions are directed to what Austin purportedly discloses and do not compensate for the lack of meaningful analysis of the differences between the prior art and the claims at issue. See Pet. 26–27. We are not apprised by a brief summary of Austin of any persuasive evidence that a person of ordinary skill at the time of the invention would have modified, selected and/or combined prior art elements in the normal course of research and development to yield the claimed invention. The Petition provides simply that “it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the seat selection algorithm and user constraints described in Silberschatz as modified by Brett with Austin’s ticket selling device used to define the best available seats.” Pet. 27. Even if Petitioner has pointed to persuasive evidence in Austin with respect to determining a “best unassigned seat” according to a definition “set by a ticket seller”—and we are not persuaded that it has—this is not sufficient for a proper obviousness analysis. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. . . . This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. This is not a sufficient fact-based analysis to persuade us that it would have been obvious to a person of ordinary skill to combine Silberschatz, Brett, and Austin.” slip op. at 17
- Obviousness (§103) › Analogous artOther
“purported teachings, alleges that Brett, Silberschatz, Austin, Nakfoor, Gathman, and Nestor are analogous art and in the same field of endeavor. Pet. 43–45. The fact that the cited references are “analogous art” (Pet. 43) and “are all in the same field of endeavor as the claimed invention” (id.) does not, by itself, however, establish that it would have been obvious to combine their features. Petitioner must show some reason why a person of ordinary skill in the art would have thought to combine particular available elements of knowledge, as evidenced by the prior art, to reach the claimed invention. KSR, 550 U.S. at 418. These conclusory labels and brief summaries of the prior art reference teachings do not substitute for a fact-based analysis in the Petition establishing what is being modified and why, based on the differences between the prior art and the claimed invention, it would have been obvious to a person of ordinary skill to make the modification.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,121,872
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.