- U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 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): 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. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - PTAB · Oct 2, 2020 · IPR2019-01539 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution, finding the Fintiv factors favored discretionary denial under § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 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. Petitioner asserts that “under NHK Spring, the Board here abused its § 314(a) discretion because it lacked an independent reason for denying review beyond the existence of a related district court action.” Req. Reh’g 3. According to Petitioner, “NHK Spring does not give the Board authority to deny institution solely or primarily because a related district court action could potentially resolve the overlapping invalidity disputes before a final decision by the Board.” Id. We disagree. Petitioner has provided no persuasive authority supporting its interpretation of NHK Spring. Binding precedent, discussed below, is contrary to Petitioner’s argued interpretation.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Conclusion Under Fintiv, the Board takes “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Fintiv factor 1 weighs evenly for each party. Fintiv factor 2 weighs moderately in favor of exercising our discretion to not institute a trial. Fintiv factor 3 weighs strongly in favor of denying institution and avoiding duplication at PTAB of discovery and other work by the parties and the Court. Fintiv factor 4 weighs in favor of discretionary denial of an inter partes review. Fintiv factor 5 weighs in favor of discretionary denial. Fintiv factor 6 favors discretionary denial. Thus, based on this analysis, we determine under the particular circumstances of this case, the interests of efficiency and integrity of the patent system tilt toward invoking our discretionary authority under § 314(a) to deny institution of the Petition. Based on our analysis, Petitioner has not shown that we abused our discretion in denying the Petition. Accordingly, the request for rehearing is denied.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“7. Conclusion Under Fintiv, the Board takes “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Fintiv factor 1 weighs evenly for each party. Fintiv factor 2 weighs moderately in favor of exercising our discretion to not institute a trial. Fintiv factor 3 weighs strongly in favor of denying institution and avoiding duplication at PTAB of discovery and other work by the parties and the Court. Fintiv factor 4 weighs in favor of discretionary denial of an inter partes review. Fintiv factor 5 weighs in favor of discretionary denial. Fintiv factor 6 favors discretionary denial. Thus, based on this analysis, we determine under the particular circumstances of this case, the interests of efficiency and integrity of the patent system tilt toward invoking our discretionary authority under § 314(a) to deny institution of the Petition. Based on our analysis, Petitioner has not shown that we abused our discretion in denying the Petition. Accordingly, the request for rehearing is denied.” slip op. at 13
Discretionary denial
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