- Roland Corporation v. Inmusic Brands, Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “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” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,424,827 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00475 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request and left in place denial of institution because the Petition did not show Cheyer was publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00384 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–18 because the petition did not show Cheyer was publicly accessible and qualified as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,523,061 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00474 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied on all challenged claims because Cheyer was not shown reasonably likely to have been publicly accessible as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied the Petition as to all claims. We determined that Petitioner had failed to satisfy its burden of demonstrating a reasonable likelihood of showing, under 35 U.S.C. § 102(b), that its principal reference, Cheyer,1 was disseminated or publicly accessible prior to one year before the effective filing date of the ’021 patent and, therefore, did not qualify as prior art under 35 U.S.C. § 102(b). Dec. 6–15.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website. Id. at 14.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00476 · APJ Debra K Stephens · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 1–27 because Cheyer was not shown reasonably likely to qualify as publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot reached
“how to retrieve Cheyer, included in Moran’s footnote citation, did not persuade us that Cheyer was publicly accessible (id. at 15; see Pet. 3)). Importantly, we note Petitioner has not shown the link provided in the footnote worked, or that the link, which is to a “Bibliography” page (see Ex. 1029), provided Cheyer’s paper or a publicly accessible link to Cheyer’s paper. In particular, Petitioner does not provide a copy of this Bibliography page to show what actually was on this page and how or if an ordinarily skilled artisan would have been able to access Cheyer’s paper from the Bibliography page. In our Decision, we noted Petitioner failed to provide testimonial or other evidence that the link provided in the article actually worked at the relevant time period, what content was included at the linked website, how one would find Cheyer after selecting the link, or which version of Cheyer allegedly was accessible via the link (Dec. 15). We also explained that this latter showing is of special importance here because Petitioner acknowledges that there were several different versions of Cheyer (id. at 12 (citing Pet. 3)).” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“professional computer scientist or engineer directed to find an article on a section of a website would have been unable to do so with reasonable diligence” (id. at 7–8). Petitioner’s argument fails for several reasons. First, it is a new argument not appropriately raised on rehearing. Second, Petitioner identifies no support in the record for the assertion that Cheyer was actually available (see Ex. 2001 and 2002) or that an ordinarily skilled artisan would have been able to find Cheyer, only Petitioner’s speculation.2 Finally, this argument overlooks that the burden is on Petitioner, not the Board, to demonstrate a reasonable likelihood of prevailing on this issue.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,757,718 - Abs Global, Inc. v. Cytonome/St, LLCRehearing deniedPTAB · Dec 14, 2018 · IPR2017-02163 · APJ Timothy J Goodson · IPR · Rehearing
The Board denied ABS Global’s rehearing request, leaving in place its denial of institution because the Petition did not show that Weigl teaches the claimed focusing regions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he 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.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“our Decision Denying Institution (Paper 11, “Decision” or “Dec.”). In that Decision, we concluded that Petitioner did not show a reasonable likelihood of prevailing in showing that any of the challenged claims of U.S. Patent No. 7,311,476 B2 (“the ’476 patent”) are unpatentable on any of the asserted grounds. See Dec. 22–27. Petitioner requests rehearing, arguing that we misapprehended or overlooked disclosures in Weigl,1 which was the primary reference Petitioner relied on in the asserted grounds. See Req. Reh’g 1. For the reasons set forth below, Petitioner’s request for rehearing is denied.” slip op. at 2
- BurdenDecided for patent owner
“helpful context, but in analyzing whether a petitioner has shown that the cited reference teaches a particular limitation, we look primarily to the section of the petition presenting arguments regarding that limitation. This flows from “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim,’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)), as well as the requirement that “the Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). See also Sirona Dental Systems GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would . . . not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory. . . .”). Here, the Request does not point to, and we do not find, any discussion of a constant-depth configuration in Weigl, in the Petition’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. Instead, as noted above, the Petition’s annotated drawings illustrating its contentions regarding these limitations show channel depth increasing, and the center fluid maintaining its dimensions as it flows downstream. The Request also argues that, leaving aside the constant-depth configuration, even a channel with increased depth would still serve to accelerate and narrow the center fluid. Req. 7–10. But here again, Petitioner did not present any such argument in the portion of its Petition arguing the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. The Request points to the summary of Weigl in the “Background of the Technology” section of the Petition. Req. 7–10 (citing Pet. 10–11). As such, we are not persuaded that our Decision overlooked or misapprehended Petitioner’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations.” slip op. at 3
NonePatents in suitUS 7,311,476 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Dec 13, 2018 · IPR2017-02202 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Richardson and Demeyer did not teach determining the claimed account information or software features through physical device recognition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 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
“machine parameters include . . . information relating to the device’s software configuration” and that a person of ordinary skill in the art would have recognized that “data relating to the client device’s software configuration can contain information regarding features of software that the user of the client device is entitled to use” (Pet. 19 (emphasis added) (citing Ex. 1103 ¶ 52; Ex. 1104 ¶ 22)), we find no support in the cited evidence that Richardson teaches or suggests that any “information regarding features of software that the user of the client device is entitled to use” could be determined by performing physical device recognition. Indeed, as we explained in our earlier Decision, we discern no information regarding “features of software that [a] user is entitled to use” in any of Richardson’s machine parameters cited by Petitioner as examples of “information relating to the device’s software configuration,” namely, “the platform on which a web browser or another application runs,” “unique parameters associated with the firmware in use,” and “software or operating system serial number.” Dec. 17; cf. Pet. 19. Despite Petitioner’s citation to the testimony of its declarant, Mr. James Geier, in support of its argument, the cited testimony in disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 9
NonePatents in suitUS 8,239,852 - Mobile Tech, Inc. v. Invue Security Products Inc.Rehearing deniedPTAB · Dec 4, 2018 · PGR2018-00004 · APJ Stacey G White · PGR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show an abuse of discretion in finding claims 1–45 supported and enabled.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting rehearing of a decision, the challenging party must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the record. Id. When considering a request for rehearing of a decision on whether to institute trial, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005) (citing Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004)). We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“’472 patent is eligible for post-grant review. Dec. 16. Here, eligibility for post-grant review depends on the effective filing date of the challenged claims. When determining the effective filing date, a claim is entitled to the benefit of an earlier filing date when an earlier application discloses the claimed invention “in the manner provided by § 112(a) (other than the requirement to disclose the best mode).” See id. at 6 (citing US Endodontics, LLC v. Gold Standard Instruments, LLC, Case PGR2015- 00019, slip. op. at 7 (PTAB Dec. 28, 2016) (Paper 54)). The ’472 patent was the latest in a chain of continuation applications that dates back to U.S. Patent Application No. 13/169,9685 (“968 Application”), which was filed on June 27, 2011. Ex. 1001, at [63]. We previously determined that the 968 5 There are other applications in this chain, but none of those applications are relevant to the issues presented here and thus, we do not address those applications. Application and the ’472 patent have substantially identical specifications and figures. See Dec. 7 (finding that the 968 Application and the patent application from which the ’472 patent issued are substantially identical). We thus determined that we were able to “analyze the ’472 patent’s eligibility for post grant review through a discussion of Petitioner’s arguments as to written description support in the ’472 patent.” Id. at 8. We then found that Petitioner failed to establish that the challenged claims lack written description support or are not enabled. See id. at 12, 15–16.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The ’472 patent expressly recites: Actuation of activation switch 85 causes logic control circuit 18 of programming station 3 to randomly generate a unique security code (i.e. SDC) that is transmitted via communication circuit 20 to communication circuit 79 of programmable key 5, which in turn stores the randomly generated SDC in security code (SDC) memory 81 of the key . . . . [T]he SDC initially provided by the programming station 3 is randomly generated and is unique to that programming station and always remains with that programming station for subsequent use. Thus, the SDC initially generated always stays with the programming station 3 and is subsequently programmed into one or more programmable keys 5. Ex. 1001, 9:23–43 (emphases added); see also id. at 10:6–12 (“[T]he particular programming station 3 of the retail store [is] used to program the key with the SDC.”). The ’472 patent also discloses that the programming station “reprogram[s] or refresh[es] the SDC into the key” after the programmable key times out, which occurs after a predetermined period elapses from the time that the programmable key was last programmed or refreshed. See e.g., id. at 12:63–13:8. Specifically, the programming station performs a “handshake” with the key “to determine whether the key has not previously been programmed with a SDC (i.e. a ‘new’ key), or is an authorized key that is being presented to the programming station a subsequent time to refresh the SDC,” and once a proper “handshake” is completed, the programming station “permits the SDC generated by the logic control circuit and/or stored in the memory to be transmitted . . . [to] the programmable electronic key.” Id. at 16:4–19. Thus, the programming station is responsible for generating the SDC and transmitting it to the programmable key. More to the point, the ’472 patent discloses that “the programming station will deactivate a SDC stored in the SDC memory of a key if an incorrect SDC is encountered when the programming station is attempting to reprogram or refresh the key.” Id. at 13:13–17 (emphases added). This contradicts Petitioner’s proposition that a key programmed with one SDC from a first programming station can then program that same SDC into a second programming station. The ’472 patent expressly teaches how to deal with a situation in which a second programming station encounters an incorrect SDC in the memory of a key: it deactivates the SDC stored in the key.” slip op. at 7
§ 112 disclosurePatents in suitUS 9,659,472 - Intel Corporation v. Godo Kaisha IP Bridge 1Rehearing deniedPTAB · Nov 27, 2018 · IPR2018-00661 · APJ Melissa A Haapala · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving institution denied for claims 1–9 and 17–22 because the petition did not show a reasonable likelihood of success on its asserted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“procedural rights. Petitioner had several options available to address the claim construction position set forth in Patent Owner’s Preliminary Response. For example, Petitioner could have sought leave to file a reply to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a reply to the preliminary response . . . .”). But Petitioner did not seek our permission to file such a reply. Petitioner also was entitled to file a request for rehearing to identify any matter we misapprehended or overlooked when construing the challenged claims. See 37 § C.F.R. 42.71(d). Although Petitioner did submit a request for rehearing, it does not assert in its request that there is any error in the claim construction set forth in our Decision. See Req. Reh’g. And while Petitioner had several options available to respond to Patent Owner’s claim construction, Petitioner was not entitled to submit claim construction briefing after the Decision Denying Institution had been entered. Accordingly, we discern no violation of procedural rights in our denial of such briefing. See Ex. 1014.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We are also not persuaded of any error in our Decision that Petitioner failed to demonstrate a reasonable likelihood of prevailing in establishing independent claims 1 and 17 would have been obvious over the asserted Cederbaum-Lee combination. See Dec. 13–16. In its rehearing request, Petitioner now newly argues that we overlooked evidence that AAPA from the ’950 patent discloses performing the first three steps of claims 1 and 17 in sequential order. Req. Reh’g 6–9. However, Petitioner did not set forth any challenge to claims 1 and 17 in its Petition based on AAPA, but rather only challenged these claims based on the Cederbaum–Lee combination. See Paper 2, 6, 24–28. A petition must include the specific statutory grounds on which the challenge to the claim is based and the patents or printed publications relied upon for each ground. 37 C.F.R. § 42.104(b)(2); see also SAS Inst., Inc. v. Iancu, 138 S.Ct 1348, 1355 (2018) (explaining that it is the petitioner that gets to define the contours of the proceeding by describing each claim challenged and the grounds on which the challenge to each claim is based). Petitioner acknowledges “it did not brief how the AAPA discloses how the AAPA discloses this claim construction in its petition.” Req. Reh’g 6. Because such a challenge was not presented in the Petition, it could not have been overlooked in our Decision.1” slip op. at 3
- BurdenDecided for patent owner
“failed to demonstrate a reasonable likelihood of prevailing in establishing independent claims 1 and 17 would have been obvious over the asserted Cederbaum-Lee combination. See Dec. 13–16. In its rehearing request, Petitioner now newly argues that we overlooked evidence that AAPA from the ’950 patent discloses performing the first three steps of claims 1 and 17 in sequential order. Req. Reh’g 6–9. However, Petitioner did not set forth any challenge to claims 1 and 17 in its Petition based on AAPA, but rather only challenged these claims based on the Cederbaum–Lee combination. See Paper 2, 6, 24–28. A petition must include the specific statutory grounds on which the challenge to the claim is based and the patents or printed publications relied upon for each ground. 37 C.F.R. § 42.104(b)(2); see also SAS Inst., Inc. v. Iancu, 138 S.Ct 1348, 1355 (2018) (explaining that it is the petitioner that gets to define the contours of the proceeding by describing each claim challenged and the grounds on which the challenge to each claim is based). Petitioner acknowledges “it did not brief how the AAPA discloses how the AAPA discloses this claim construction in its petition.” Req. Reh’g 6. Because such a challenge was not presented in the Petition, it could not have been overlooked in our Decision.1 We conclude that Petitioner has not identified any matter that we misapprehended or overlooked, much less in a manner that constitutes an abuse of discretion.” slip op. at 3
NonePatents in suitUS 6,709,950 - PTAB · Nov 20, 2018 · CBM2018-00018 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review of claims 1–17 and 22–24 because the patent did not qualify as a covered business method patent.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“completion of a purchase of a ticket, is a “recitation of a financial operation” sufficient to establish that claims 23 recite a covered business method. See 37 C.F.R. § 42.304(a) (“The petitioner must demonstrate that the patent for which review is sought is a covered business method patent . . . .”). Petitioner simply does not now explain persuasively why the transmission of a secured validating display by a computer system in the course of validating a ticket that had been purchased constitutes activity that is “active[] and contemporaneous[]” with the “management or administration of a financial product or service.” See Req. Reh’g 3–4. In order to be eligible for a CBM review, the challenged patent must “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . .” AIA § 18(d)(1). After considering the Petition, we determined that Petitioner did not meets its burden of demonstrating that the patent for which review is sought is a covered business method patent. Although Petitioner may disagree with our determination as to claim 23, disagreement is not, itself, a proper basis for requesting rehearing. Here, Petitioner does not identify persuasively that we misapprehended or overlooked any matter in reaching a determination other than that desired by Petitioner.” slip op. at 5
- BurdenDecided for patent owner
“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. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
NonePatents in suitUS 9,239,993
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.