- Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Dec 21, 2020 · IPR2017-01753 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied Gilead’s rehearing request, leaving institution denied because Petitioner did not show the Board abused its discretion or misapprehended the obviousness record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). 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.” Id. When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. Instead, an abuse of discretion occurs 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. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5
- BurdenDecided for patent owner
“Under Rule 42.108(c), The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Thus, under the Rule, it is only genuine issues of material fact created by testimonial evidence provided by a patent owner with its preliminary response that we view “in the light most favorable to the petitioner.” 37 C.F.R. § 42.108(c) (2017).2 Because Patent Owner did not provide testimonial evidence in this proceeding, there is no “genuine issue of material fact created by such testimonial evidence.” Accepting Petitioner’s argument that we must always resolve any genuine dispute of material fact in the light most favorable to the petitioner would compel institution in every case where a petitioner presents unrebutted expert testimony. But a patent owner has no obligation to rebut the petitioner’s contentions or to submit an expert declaration rebutting the petitioner’s expert testimony. See 37 C.F.R. §§ 42.107(a) (“The patent owner may file a preliminary response to the petition.” (emphasis added)); 42.108(c) (“The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” (emphasis added)). And the Board is not required to accept every statement made by a petitioner’s expert as established fact simply because the patent owner does not submit contradictory expert testimony. Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020). Instead, “it is the Board’s duty to independently assess the strength of a petitioner’s argument and evidence.” Id., see also id. (“[I]n every case, it remains the Board’s essential function to make factual findings based on its view of the record.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“In the Decision denying institution, we concluded that the evidence before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,815,830 - 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 - Victoria’S Secret Stores LLC v. Andra Group, LPRehearing deniedPTAB · Dec 11, 2020 · IPR2020-00853 · APJ Eric C Jeschke · IPR · Rehearing
The Board denied rehearing, leaving institution denied because the Petition did not show a reasonable likelihood of prevailing on any asserted ground for claims 1, 2, 5–8, and 11.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. See 37 C.F.R. § 42.71(d) (2019). A request on rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the briefing. Id. When reconsidering a decision on institution, we review for an abuse of discretion. See 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an inter partes review of claims 1, 2, 5–8, and 11 (the “challenged claims”) of U.S. Patent No. 8,078,498 B2 (Ex. 1001, “the ’498 patent”). Paper 1 (“Pet.”). Andra Group, LP filed a Patent Owner’s Preliminary Response. Paper 10. We denied institution, determining that the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims in any of the three asserted grounds of unpatentability. See Paper 12 (“Decision on Institution” or “Dec.”). Petitioner timely filed a Request on Rehearing, requesting “partial reconsideration” as to one of the three asserted grounds, in which Petitioner asserted that the challenged claims would have been obvious based on VS Webpages (Ex. 1031). Paper 13 (“Request on Rehearing” or “Req. Reh’g.”), at 1; see also Pet. 40, 51–67 (discussing this ground). For the reasons below, Petitioner’s Request on Rehearing is denied.” slip op. at 2
- Obviousness (§103) › Analogous artNon analogous artNot reached
“The fact that the Decision on Institution did not discuss whether VS Webpages is analogous art to the ’498 patent does not show that we “misapprehended or overlooked” an argument or evidence. See 37 C.F.R. § 42.71(d). An assessment of whether relied-upon art is analogous is a threshold inquiry in an obviousness analysis. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Analogous art is merely a threshold inquiry as to whether a reference can be considered in an obviousness analysis. Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Here, we did not address analogousness because we determined that other issues were dispositive as to the asserted ground at issue. Specifically, as discussed below, Petitioner had not shown a reasonable likelihood in prevailing with its position that human beings fall within the scope of the term “article” (or “articles”) in the challenged claims. See Dec. 13–18.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented in the Petition. In the Decision on Institution, we expressly stated that, even in the context of Petitioner’s alternative position—involving modifying certain images displayed by VS Webpages—“Petitioner continues to rely on human beings as the ‘article[s].’” Dec. 15 n.9 (citing Pet. 58–59 (discussing the alternative reliance on Vertex as to clause D), 60 (discussing clause E)). The aspects of the Petition cited in Petitioner’s Request on Rehearing continue to support this statement.” slip op. at 5
§ 103 obviousnesscites GrahamPatents in suitUS 8,078,498 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationInstitution deniedPTAB · Dec 8, 2020 · IPR2020-00663 · APJ Kimberly Mcgraw · IPR · Institution
Institution was denied for claims 1 and 2 because Petitioner did not show a reasonable likelihood that either claim would have been obvious over Griswold or England.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution 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); see 37 C.F.R. § 42.108. Upon consideration of the submitted evidence and argument, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time the ’603 patent was filed (a “POSITA”) would have had a minimum of a bachelor’s degree in computer science, electrical engineering, mathematics, or a related field, and approximately two years of relevant experience or equivalent study in electronic data protection, electronic content protection, or digital rights management. Pet. 16. Petitioner further states that additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. (citing Ex. 1002 ¶¶ 47–48). Patent Owner sets forth a similar definition, stating that a POSITA would have a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields. Prelim. Resp. 19. Patent Owner states that the positions set forth in its Preliminary Response would be the same under either parties’ proposal. Id. The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the prior art and the ’603 patent. We note, however, that our analysis would be the same under either parties’ definition of a POSITA.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“should be construed to mean “conditions or characteristics determined in advance against which to check the structure and/or behavior of one or more software modules.” Pet. 16–18 (citing Ex. 1002 ¶¶ 67–72). To support this proposed construction, Petitioner states that the ’603 patent describes “inspector modules that ‘are operable to check the structure and/or behavior of drivers, software, and/or hardware against predefined criteria.’” Id. at 17 (emphasis omitted) (quoting Ex. 1001, 15:36–62); see also id. (citing Ex. 1001, 16:25–34, 23:63–24:4). Patent Owner contends that the term “predetermined criteria” does not require construction and should be given its plain and ordinary meaning. Prelim. Resp. 21. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute. Id. We agree that no explicit construction of this phrase is necessary for our decision on whether to institute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and 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 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“With respect to Petitioner’s first argument, Petitioner contends that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software in order for the software to be used together with the content . . . .” Id. at 33 (citing Ex. 1002 ¶ 93), id. at 25 (citing Ex. 1002 ¶ 81). Petitioner, however, does not provide sufficient evidence to support its contention. Although Petitioner cites to the declaration testimony of Dr. Madisetti to support its argument, Dr. Madisetti’s testimony merely repeats verbatim what is stated in the Petition and provides no additional persuasive facts or objective evidence to support his conclusion. See Ex. 1002 ¶ 93; see also id. at ¶¶ 77–82. To satisfy its burden of proving obviousness a petitioner cannot employ mere conclusory statements. In re Magnum Oil Tools Int’l, 829 F.3d at 1380; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). We are also not persuaded by Petitioner’s second argument that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software . . . so that information identifying the software can be transmitted in the license datagram for evaluation at the licensor’s site.” Pet. 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Petitioner does not provide sufficient evidence or argument either that the license datagram provides information about the software (as opposed to the licensed product itself) or a reason why a POSITA would have understood information about the software would be provided in the datagram for evaluation at the licensor’s site. To support this second argument, Petitioner states Griswold’s license check system involves sending a “request datagram” or a “license datagram” to the licensor’s site in order to obtain approval to use the licensed product. Pet. 24–25 (citing Ex. 1006, 3:62–4:5, 5:44–52). Petitioner contends Griswold’s “license datagram 3 describes information related to the use of licensed product 1, including an identification of product 1 (i.e., the software).” Id. at 25 (citing Ex. 1006, 5:44–45, 6:37–51); see also id. at 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Griswold, however, does not state that license datagram 3 identifies the software separately from the product. Rather, Griswold sates that datagram 3 contains a number of fields, including product model number 24 that identifies product 1. Ex. 1006, 6:45–48. Thus, we disagree with Petitioner’s assertion that license datagram 3 identifies the software separately from the product. Petitioner’s contention that a POSITA would have understood that, in the embodiment where the software is separate from the content, the monitor must first identify the software so that information identifying the software can be transmitted in the license datagram for evaluation at the licensors site, is conclusory and unsupported. See Pet. 33 (citing Ex. 1002 ¶ 93). Thus, Petitioner has not sufficiently shown that Griswold teaches the” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,406,603 - Satco Products, Inc. v. Seoul Semiconductor Co., LtdRehearing deniedPTAB · Dec 8, 2020 · IPR2020-00248 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Sanga disclosed the claimed spacer-layer bandgap requirement.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- BurdenDecided for patent owner
“We further note that for purposes of the bandgap requirement of the spacer layer limitation, Petitioner relies on the specific barrier layer, spacer layer, and quantum well layer described for Example 1. Pet. 35–36 (comparing the bandgap of the In0.03Ga0.97N layer of Example 1 with the GaN barrier layer of Example 1 and the In0.3Ga0.7N quantum well layer of Example 1). Example 1 does not expressly include an n-side multilayer structure with an InxGa1-xN/InyGa1-yN configuration, wherein each layer contains indium and x<y≤ 0.1. Therefore, Petitioner’s analysis of the bandgap requirement for claim 9, which expressly relies on Sanga Example 1, requires replacing the actual spacer layer in Example 1 with a different layer, while keeping the barrier layer and quantum well layer the same for purposes of bandgap comparison. Petitioner, however, has not provided adequate justification for doing so. Petitioner’s citation to Sanga’s general disclosure of “a multilayer having a periodic structure repeating InxGa1-xN/InyGa1-yN (0≦x<y<1)” in support of its InGaN/InGaN stack argument is unhelpful. Reh’g Req. 3. We acknowledge that this statement discloses the use of stacked InGaN layers of varying indium composition in general. But Petitioner does not direct us to bandgap values for this generic periodic structure, and to arrive at the bandgap requirement of the spacer layer limitation of claim 9, Petitioner refers back to Example 1, and its analysis of the bandgap values of the specific barrier layer, spacer layer, and quantum well layer disclosed therein. As such, we are not persuaded this general disclosure of Sanga cures the deficiencies discussed above.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“In its Rehearing Request, Petitioner presents new arguments in support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“bandgap requirement to the spacer layer as a whole, but Patent Owner argued that this requirement should be construed such that it requires all the layers comprising the spacer layer to meet the bandgap requirement. Reh’g Req. 6. Petitioner, however, never identifies any particular matter that we misapprehended or overlooked in connection with this argument. Furthermore, Petitioner did not propose a construction of the bandgap requirement in the Petition (Pet. 7–20), and Patent Owner argued that Petitioner’s arguments fail regardless of how the bandgap limitation is construed (Prelim. Resp. 36). In this regard, we note that in our Decision we determined that we did not need to construe the bandgap requirement. Dec. 6.” slip op. at 7
Claim constructionPatents in suitUS 9,716,210 - One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedInstitution deniedPTAB · Dec 7, 2020 · PGR2020-00061 · APJ Linda E Horner · PGR · Institution
The Board denied institution because Petitioner did not show that the ’420 patent was eligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner’s evidence in support of its assertion that “[t]he earlier [CN914] application does not disclose a ‘gripping member’ and ‘handle’” is inadequate. Petitioner attempts to show that the earlier CN914 application does not disclose these claimed features by showing that the later CN040 application does disclose them. But, Petitioner’s premise that the earlier CN914 application omits these features does not necessarily or logically flow from this showing. In other words, the depiction of what appears to be a substantially cylindrical gripping member and an elongated handle in the later CN040 application does not exclude these features also from being disclosed in the earlier CN914 application. Further, as Patent Owner demonstrated by the side-by-side annotated figures from each priority application, the earlier CN914 application appears to show similar-looking features as the substantially cylindrical gripping member and the elongated handle identified by Petitioner in the figures of the later CN040 application. A relevant difference between these two annotated figures is that the features depicted in the earlier CN914 application that Patent Owner annotates as corresponding to the “elongated handle” and the “substantially cylindrical gripping portion” do not have accompanying reference numbers “13” and “23” associated with them in that figure, while these same features depicted in the later CN040 application include the same reference numbers “13” and “23” that appear in the parent ’627 patent figures. Although the lack of reference numbers in the earlier CN914 application may suggest that the written description of this earlier application does not discuss these features explicitly, drawings alone can provide “written description” support for features depicted in them. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991) (“[D]rawings alone may be sufficient to provide the ‘written description of the invention’ required by § 112, first paragraph.”). Petitioner has failed to address the drawings presented in the earlier CN914 application or establish sufficiently that the claim features of the parent ’627 patent are not disclosed therein. For these reasons, we find that Petitioner has not shown sufficiently” slip op. at 16
- PTAB / AIA Trials › Real party in interest / privityNot reached
“of the Petition. RPI Motion, 1 (seeking “to identify Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc., and Homelite Consumer Products, Inc., as real parties-in-interest without admitting that they are, in fact, real parties-in-interest”). Because we deny the Petition for other reasons, we do not decide this motion. 2 The other eight petitions are IPR2020-00883, IPR2020-00884, IPR2020- 00885, IPR2020-00886, IPR2020-00887, IPR2020-00888, PGR2020-00059, and PGR2020-00060.” slip op. at 3
- PTAB / AIA Trials › Discretionary denialNot reached
“Patent Owner contends that we should exercise that discretion and not institute trial because of the state of the parallel district court litigation.7 Prelim. Resp. 14–16. Because we determine that Petitioner fails to show the ’420 patent is eligible for post-grant review, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“This issue has been addressed by the Federal Circuit’s decision in Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”); see also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”). Accordingly, we do not consider this issue any further for this Decision.” slip op. at 10
Discretionary denialPatents in suitUS 10,524,420 - Satco Products, Inc. v. Seoul Viosys Co., Ltd.Rehearing deniedPTAB · Dec 2, 2020 · IPR2020-00655 · APJ Erica A Franklin · IPR · Rehearing
The Board denied Satco’s rehearing request and maintained denial of institution for claims 1, 2, 6, and 7 because Satco did not show the Board misapprehended or overlooked its petition arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. 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.” Id. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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. 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.” Id. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 3
- BurdenDecided for patent owner
“misapprehended Petitioner’s argument relating to the meaning of the word “continuous” not based upon what it presented in the Petition, but instead based upon newly raised arguments regarding what it asserts is the ordinary and customary meaning of the term. That showing is misplaced as a Rehearing Request does not provide an opportunity to raise additional arguments or supplement information set forth in the Petition. Thus, Petitioner has not shown that we have misapprehended any matter raised in” slip op. at 7
NonePatents in suitUS 9,627,435 - Sotera Wireless, Inc. v. Masimo CorporationInstitution deniedPTAB · Dec 2, 2020 · IPR2020-01082 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution for claims 1–8 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The 3 Patent Owner has not presented objective evidence of non-obviousness. burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only those claim terms that are in controversy need to be construed, 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). Although the record reflects certain disputes regarding the claim language, it is not necessary for us to resolve those disputes in order to determine whether Petitioner has satisfied its burden of demonstrating a reasonable likelihood of prevailing. See also Pet. 16–19 (construing the claim terms “alarm condition” and “alarm notification delay time,” but stating that the “Board need not construe these terms because the claims are invalid under either [parties’ proposed] interpretation”); Prelim. Resp. 27–31 (agreeing that “the Board does not need to construe any claim terms for purposes of deciding whether to institute the Petition,” but also arguing that Petitioner failed to identify corresponding structure for the purported meansplus-function term, “reporting module”). Accordingly, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 15 (citing Ex. 1003 ¶¶ 41–43). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Moreover, Petitioner provides insufficient reasoning to show that a skilled artisan would have been motivated to modify Lynn’s system to implement Kalkman’s simulation. We agree with Patent Owner that such a modification would render Lynn unsuitable for its intended purpose as an oximeter testing apparatus. Prelim. Resp. 46–47. For example, Petitioner does not explain how Lynn’s system would achieve its intended purpose of testing the responsiveness of an oximeter if the system were modified to simulate pre-alarm delay times instead of respiratory arrest. See, e.g., Pet. 43 (“[A] PHOSITA would have been motivated to modify the system of Lynn to use the pre-alarm delay time simulation of Kalkman to achieve the predictable result of optimizing pre-alarm delay times and reducing false and transient alarms.”). Neither Petitioner nor Dr. Yanulis explain why a person of ordinary skill in the art would have been motivated to abandon Lynn’s intended purpose as an oximeter testing apparatus, even if such a combination would have resulted in the optimization of pre-alarm delay times, as Petitioner contends. Pet. 42–44; Ex. 1003 ¶¶ 110–113. Petitioner does not discuss this trade-off in functionality or intended purpose at all.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,255,994 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00873 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the Fintiv factors favored denial because trial was near, the petition was delayed, and issues substantially overlapped.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 73. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. In a balanced assessment of the relevant evidence of record, and in view of the possible strength of Petitioner’s showing on the present record, this factor is neutral.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“On the record before us at this time, the only persuasive facts that we have regarding the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision is an Order by the District Court that sets trial for April 5, 2021, which will require “good cause” to be changed, and our projected statutory deadline, which would be toward the end of November 2021. While we appreciate that the trial date is susceptible to change if and when the District Court determines good cause exists to do so, we decline to speculate whether such a contingency will occur. Instead, we must base our evaluation on the existing facts supported by the evidence of record. This factor, therefore, significantly favors the exercise of discretionary denial.” slip op. at 9
Discretionary denialPatents in suitUS 9,820,123 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
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” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677
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.