- Lavelle Industries, Inc. v. Danco, Inc.Institution deniedPTAB · May 4, 2017 · IPR2017-00159 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 6, 11, or 14 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Petitioner does not propose a level of ordinary skill in the art. Relying on the testimony of Mr. Jones, Patent Owner, asserts that a person of ordinary skill in the art “typically would have had (a) a bachelor’s degree in mechanical engineering, or a related field, and at least two years of experience in the design of plumbing components; or (b) a high school degree and at least four years of experience in the design of plumbing components.” Prelim. Resp. 19 (citing Ex. 2003 ¶ 24). Mr. Jones testifies that his opinion is based on his “experiences working in the field of product design in the plumbing industry in addition to the specification and claims of the ‘455 Patent in light of the state of the art in the 2012 time frame.” Ex. 2003 ¶ 24. We determine that the level of ordinary skill proposed by Mr. Jones is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are not persuaded by Petitioner’s arguments and evidence that Turner’s sleeves 20, 52 are collapsible. We agree with Patent Owner and Mr. Jones that “flexibility is not the same as collapsibility,” and that Turner thus does not disclose that flexible sleeves 20, 52 necessarily are collapsible. Furthermore, Mr. Jones testifies that one of ordinary skill in the art would not find Turner’s sleeves to be collapsible and “a cylindrical polyethylene wall that is 1/16 or 5/32 of an inch [as disclosed in Turner] would actually be relatively rigid (although still capable of flexing).” Ex. 2003 ¶¶ 65–66. We find this testimony, which is based on Mr. Jones’ “experiences with polyethylene and similar materials and how they have been used in the plumbing industry,” credible and persuasive. See Ex. 2003 ¶ 66. Petitioner, on the other hand, offers no objective evidence supporting its assertion that Turner’s sleeves are collapsible.” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered Petitioner’s argument and evidence, we are not persuaded that Schwartz’s intermediate portion 24 is collapsible. Instead, we agree with Patent Owner that the passage of Schwartz cited by Petitioner as disclosing collapsibility (line 21 of column 2), fails to suggest that intermediate portion 24 is collapsible. Indeed, this passage merely discloses that ferrule 12 is shaped with radial flange 18. Ex. 1002, 2:21. As such, we are not directed to any disclosure in Schwartz that suggests intermediate portion 24—or any part of ferrule 12—is collapsible. Schwartz discloses that ferrule 12 is made of “chemically inert plastic material” (Ex. 1002, 2:13–14), but insufficient reasoning is given to establish that this material necessarily would be collapsible. Regarding Petitioner’s argument noted above that intermediate portion 24 “must” be collapsible, we agree with Patent Owner that this argument is not persuasive. The assertion that the intermediate portion must at least partially collapse to provide a sealing force against the soil pipe and to take up any variable space present above the pipe is not supported sufficiently by objective evidence or analysis. Furthermore, this assertion is contradicted by Mr. Jones’ testimony, which we credit. See Ex. 2003 ¶ 51.” slip op. at 14
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,273,455 - PTAB · Apr 3, 2017 · IPR2016-01516 · APJ John A Hudalla · IPR · Rehearing
The Board denied LG’s rehearing request and left in place the denial of institution on claims 1–12 and 58–67 because neither four-reference obviousness ground established each challenged reference’s prior-art status.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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. See 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 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied institution on both grounds presented in the Petition. Dec. 13. In particular, we found that LG had failed to make a threshold showing that one reference from each of its two obviousness grounds—namely, Callaghan Book and Microsoft SMB—qualified as prior art under 35 U.S.C. § 102(b). See id. at 11, 13. Accordingly, we determined that LG had not established a reasonable likelihood that it would prevail in asserting that claims 1–12 and 58–67 would have been obvious over the cited references. Id. LG filed a Request for Rehearing asking that we reconsider our decision not to institute a trial on these obviousness grounds. Paper 24 (“Req. Reh’g”).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“requirements are met.1 Specifically, we may not institute inter partes review unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (emphasis added). LG did not meet this threshold requirement in its Petition, because LG merely asserts that Callaghan Book and Microsoft SMB are printed publications under 35 U.S.C. § 102(b) with no supporting analysis whatsoever. See Pet. 5. In the absence of any showing that these references qualify as printed publications, and based on the relevant dates for Callaghan Book, we found that LG had not met the threshold showing for institution under § 314(a). See Dec. 10–13. Thus, we are not persuaded by LG’s arguments. III. CONCLUSION For the reasons above, we conclude that LG has not met its burden of showing an abuse of discretion, or that we misapprehended or overlooked any of LG’s arguments, in our determinations (1) that LG put forth two fourreference obviousness grounds, and (2) that LG failed to establish the prior art status of one reference in each of the grounds, namely, Callaghan Book and Microsoft SMB. See Dec. 4–5, 10–13. We, therefore, deny LG’s request to modify our determinations and institute an inter partes review of the challenged claims in the ’511 patent.” slip op. at 7
- BurdenDecided for patent owner
“numbered grounds in LG’s chart really represents eight distinct challenges, meaning the Petition includes sixteen grounds of unpatentability. Under this logic, eight grounds would remain even if LG failed to establish the prior art status of Callaghan Book in “Ground 1” or Microsoft SMB in “Ground 2.” See Req. Reh’g 4–5. LG’s argument belies its requirement to “[p]rovide a statement of the precise relief requested for each claim challenged” in the Petition, including identifying “[t]he 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) (emphases added); see also 35 U.S.C. § 312(a)(3) (a petition is required to “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). LG’s failure to identify specifically and clearly its alleged sixteen grounds is further illustrated by its color-coded Exhibit 1037, wherein LG invites us to parse the discussion of “Ground 1” and “Ground 2” in the Petition by color to construct the eight permutations of grouped references that do not include Callaghan Book or Microsoft SMB. We decline to comb through the Petition to determine the strongest arguments or particular combinations of references that might survive LG’s failure to establish the prior art status of certain references. Instead, we fairly read LG’s “Ground 1” and “Ground 2” to be two grounds. We also stated that each of these two grounds relied on the secondary references throughout the analysis (see Dec. 4–5), which is supported by LG’s color-coded Exhibit 1037. Accordingly, we properly interpreted the Petition as including two four-reference obviousness grounds. Id. at 5. Under these circumstances, LG’s arguments do not persuade us that we misapprehended or overlooked additional grounds in our Decision on Institution.” slip op. at 4
§ 102 anticipationPatents in suitUS 7,149,511 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Jun 21, 2016 · IPR2015-00454 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Apple’s rehearing request and left in place its denial of institution on claim 18 over Rosen and Hartrick, finding procedural defects and an inadequate obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing a decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in” the petition. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“failure to comply with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Dec. 4–5. In particular, we determined that: (1) “[t]he entire Petition is riddled with vague, nested string citations to broad swaths of the references, the [Declaration of Alan Sherman (‘Sherman Declaration’)], and internal cross-references to whole sections of the Petition” (id. at 5); (2) the Petition utilizes a convoluted structure resulting in an “unpatentability analysis [that] is at least two or three levels removed from the actual disclosure of the references” (id. at 6–7); and (3) the Petition relies on an improper incorporation by reference of the Sherman Declaration4 (id. at 7– 8). In addition to these procedural defects, we also determined “that the Petition’s obviousness analysis does not provide sufficient information to enable us to perform a proper Graham analysis, is driven by improper hindsight, and lacks sufficient articulated reasons with rational underpinnings to support the modifications it proposes.” Id. at 9; see also id. at 9–15 (discussing deficiencies of the obviousness analysis).” slip op. at 3
- BurdenDecided for patent owner
“To succeed on its Rehearing Request, Petitioner must show where we misapprehended or overlooked arguments in making the aforementioned determinations and that we abused our discretion in reaching each of these determinations. As we explain below, Petitioner has not done so.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As we explained in our Decision, even Petitioner’s attempt to classify the changes as limited to four modifications is unconvincing. Dec. 12–14. Having considered Petitioner’s arguments on rehearing, we reaffirm our conclusion in the Decision that the Petition does not explain sufficiently “why a person of ordinary skill would simultaneously make all of the many particular proposed changes [(i.e., ‘modifications’)] and implementation choices to combine Rosen and Hartrick,” for the reasons explained in the Decision. Id. at 13.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,269,576 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Rehearing deniedPTAB · Mar 1, 2016 · IPR2015-01318 · APJ Jameson Lee · IPR · Rehearing
The Board denied NVIDIA’s rehearing request and left in place the denial of institution for claims 1–15 because the Petition did not explain Yamakawa’s differing embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
NonePatents in suitUS 8,252,675 - Motorola Mobility LLC v. Intellectual Ventures I LLCInstitution deniedPTAB · Feb 9, 2016 · CBM2015-00174 · APJ Jeffrey W Abraham · CBM · Institution
The Board denied institution because the petitioner did not show that the ’144 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“2. Analysis Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional proceeding only for a patent that is a CBM patent. Section 18(d)(1) of the AIA defines the term “covered business method patent” to mean “a patent that claims 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, except that the term does not include patents for technological inventions.” For purposes of determining whether a patent is eligible for a covered business method patent review, the focus is on what the patent claims. See 37 C.F.R. § 42.301(a), definition of CBM patent; see also 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012), Response to Comments on Notice of Proposed Rulemaking, response to comment 8. A patent need have only one claim directed to a covered business method to be eligible for review. See Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. at 48,736.” slip op. at 9
- BurdenDecided for patent owner
“To that end, Petitioner does not explain adequately, and we are unable to discern, how any of the independent or dependent claims of the ’144 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” On their face, the claims of the ’144 patent are directed to a general method or corresponding apparatus for transferring files from a first device to a second device, and we are unable to identify specifically any claim terms that could be considered “financial in nature.” In view of this, we agree with Patent Owner that the claims, at least facially, relate to “technologies common in business environments that have no particular relation to the financial services sector.” Prelim. Resp. 10.” slip op. at 10
Discretionary denialPatents in suitUS 7,810,144 - Intermix Media, LLC v. Bally Gaming, Inc.Institution deniedPTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution
The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptNot shown unpatentable
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 5,816,918 - Emnos USA Corp. v. Dunnhumby LimitedInstitution deniedPTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution
The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 8,214,246 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01316 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that VESA P&D and VESA Flat Panel were publicly accessible printed publications, so claims 6–10 could not rely on them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 6–10 of the ’724 patent. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We find Patent Owner’s arguments persuasive. Petitioner does not explain adequately whether or how the VESA documents were made “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. Instead, Petitioner merely asserts that “VESA is a well-known standards setting organization that promulgates standards relating to video in electronics.” Pet. 14 (citing Ex. 1003 ¶ 58); id. at 22 (citing Ex. 1003 ¶ 75). As such, we determine that Petitioner has not made a sufficient showing that the VESA documents are printed publications under § 102(b). See Lister, 583 F.3d at 1317 (burden is on the proponent to show the purported reference was publicly available). Therefore, based on the record before us, we conclude Petitioner has not made a sufficient showing that either VESA P&D or VESA Flat Panel may be relied upon as prior art with respect to claims 6–10 of the ’724 patent.” slip op. at 6
§ 102 anticipationcites PhillipsPatents in suitUS 6,804,724 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01315 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that Lai qualified as prior art, defeating both asserted grounds for claims 1, 3, and 26–29.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Lai issued from U.S. Patent Application No. 10/236,794, which was filed on September 6, 2002 and claims the benefit of U.S. Provisional Application No. 60/328,284, filed on October 9, 2001 (Ex. 1004, “the Lai Provisional”). Ex. 1003, [21], [22], [60], 1:8–12. Because Lai’s filing date postdates the effective filing date of the ’602 patent, Lai must be entitled to the benefit of the Lai Provisional filing date to qualify as prior art under 35 U.S.C. § 102(e). Lai is entitled to the benefit of the Lai Provisional filing date if the disclosure of the Lai Provisional supports the claimed subject matter of Lai in accordance with 35 U.S.C. § 112, ¶ 1.1 See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”).” slip op. at 5
- Strike new argumentNew argument disregardedOther
“In a conference call with the parties, the panel authorized Petitioner to submit a five-page, non-argumentative claim chart showing how the claims of a reference patent asserted by Petitioner are supported by a provisional application. Paper 9, 3. The panel also authorized Patent Owner to file a five-page response to Petitioner’s claim chart. Id. at 4. Petitioner filed a claim chart. Paper 8. Paper 8 included two pages of text in addition to the five-page claim chart. Because these two additional pages are not in compliance with our Order (see Paper 9), we have considered the claim chart only and none of the arguments presented in the additional two pages. Patent Owner subsequently filed a response to Petitioner’s claim chart. Paper 10.” slip op. at 2
§ 102 anticipationcites PhillipsPatents in suitUS 6,819,602 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claims 1–18 because Apple did not show an abuse of discretion in the Board’s merits decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing Request—characterizing the modifications as “a single change” as noted—neither clarifies the Petition nor shows that the Board overlooked or misapprehended a matter. Petitioner correctly notes that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6; however, extensive modification was just one of many problems obfuscating the asserted ground. The Decision explains that combined with the many other deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of prevailing on any of the challenged claims. See Dec. 11–21 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable a proper Graham analysis).” slip op. at 3
NonePatents in suitUS 8,370,956
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.