- Peddinghaus Corporation v. Ficep CorporationRehearing deniedPTAB · Oct 8, 2021 · IPR2020-01707 · APJ Jameson Lee · IPR · Rehearing
The Board denied Peddinghaus’s rehearing request, finding no abuse of discretion in denying institution on claims 1–14 because Hashimoto did not disclose the claimed intersection parameters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Reh’g Req. 7–8. Although Petitioner avers that the “identifying” of intersection parameters, or connecting holes, is completed in Hashimoto by the member totaling module before any order list is prepared, the order list is pertinent evidence for that assertion and there is nothing inappropriate in discussing that evidence. We recognize no other evidence which was identified by the Petitioner in the Petition, and Petitioner points to no such other evidence that we overlooked. Indeed, Petitioner states: “The Petition references the order list depicted in Figure 19 as merely providing a summary of the information (the ‘total’) that was previously identified and extracted by the member totaling module.” Id. at 8 (emphasis added). As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“meaning of “fastening holes” changes from the first to second embodiment.3 For example, in the Background section of Hashimoto, “fastening holes” are defined generally as holes formed “in the light gauge shape steel for the fastening tools.” Ex. 1005 ¶ 4. The same Background paragraph provides examples of “fastening tools such as a tapping screw and a one-side rivet.” Id. (Emphasis added). Thus, this definition does not strictly limit fastening holes to connecting holes, since it does not foreclose the likely possibility of fastening tools including wires or wiring. Moreover, a “machine for forming the fastening holes” is also disclosed in the Background, the same “non-stationary fastening hole forming machine 5” discussed in Figures 20-21 of the second embodiment. Id. ¶ 5. Thus, when “fastening holes for passing the electrical wiring” (emphasis added) are disclosed in the discussion of Figures 20-21 in Hashimoto’s paragraph 154, there is no evidence suggesting that a different type of “fastening hole” other than what has been generally described in the Background is being mentioned. Id. ¶ 154. The same applies for the 3 The statement made in footnote 3 on pages 11–12 of the Rehearing Request that the only holes in Figure 18 are joints only establishes that the holes in Figure 18 may be connecting holes, not all “fastening holes” in Hashimoto. disclosure that “fastening hole information includ[es]…[where] the wiring holes [are] formed in the stud” in paragraph 156 and how character c in Figure 23 “designates a hole for electrical wiring or a fastening hole for mounting the stud on the structural face plate” (emphasis added) in paragraph 157. Id. ¶¶ 156–157. Thus, it is a much more reasonable reading that in all embodiments of Hashimoto, the definition of “fastening holes” includes both connecting holes and non-connecting holes – such as those for wiring.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 7,974,719 - Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyRehearing deniedPTAB · May 17, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution on claims 1–3, 5, 8–17, 19–21, and 23 because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“We recognize that Paragraph 50 of Zhang describes two ways to measure the voltage “at the two terminals” of the vehicle battery, and the other way is by the small teeth of the output power clip. Ex. 1006 ¶ 50. But Zhang describes the two ways as occurring “at the same time,” and not as alternative implementations. Thus, measurements at both points are taken to obtain the voltage at the two terminals of the vehicle battery. Dr. Hartup does not address or explain how a measurement can be taken at the input terminal of the DC contactor that would be indicative of the voltage of the external vehicle battery connected to the output terminal of the DC contactor, if the DC contactor is not already closed. Ex. 1003 ¶ 59. The Petition does not address Zhang’s disclosure of measuring the voltage of the vehicle battery on the input side of the DC contactor at the same time a measurement is taken by the small teeth of the output power clip. Paper 9, 33 (emphasis added).” slip op. at 3
- BurdenDecided for patent owner
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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.” Id.” slip op. at 2
§ 102 anticipationPatents in suitUS 9,007,015 - Sports Nutrition Research, Ltd. v. Chemi NutraRehearing deniedPTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). 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 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). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9
Claim constructionPatents in suitUS 10,869,843 - Red Hat, Inc. / Dell Inc. et al. v. Electronics & Telecommunications Research InstituteRehearing deniedPTAB · Oct 16, 2019 · IPR2019-00465 · APJ Jameson Lee · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–14 because Petitioner did not show an abuse of discretion in the claim construction underlying the merits decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “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 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“including tables. Step “b)” of claims 1 and 11 reads as follows: “b) generating the metadata including information of the logical volume and the disk partitions forming the logical volume and storing the metadata to the disk partitions forming the logical volume.” Ex. 1001, 12:22–25, 14:32– 35 (emphasis added). Claim 8 essentially recites the same. See id. at 13:36– 39. Each of claims 1, 8, and 11 further recites: “wherein the metadata includes a disk partition table . . . ; a logical volume table . . . ; an extent allocation table . . . ; and a mapping table . . . .” Id. at 12:35–47, 13:49–61, 14:46–67. The antecedent basis for “the metadata” is that metadata which has been generated and stored in the disk partitions forming the logical volume.” slip op. at 3
Claim constructioncites PhillipsPatents in suitUS 6,718,436 - Askelladen L.L.C. v. Digital Verification Systems LLCRehearing deniedPTAB · May 29, 2019 · IPR2018-00745 · APJ Jameson Lee · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 1-22 because the claims recite a means-plus-function element without identifying its computer-implemented algorithm.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “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 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). For reasons discussed below, Petitioner’s arguments are unpersuasive. The Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Decision, we determined that all claims include a means-plus- function element under 35 U.S.C. § 112, sixth paragraph, and that because Petitioner did not identify corresponding structure in the specification, Petitioner did not show a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim. In the Request, Petitioner asserts that we erred in determining that claims include a means-plus-function element. Req. Reh’g 1.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“hardware to execute the software fails to set forth sufficient structure, as we discussed in the Decision. Decision 10–11. But for rare exceptions not applicable here for reasons explained in the Decision, the structure for a computer-implemented function is the “algorithm” by which the software performs. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The claims here do not specify the algorithm by which the computer” slip op. at 4
Claim constructionPatents in suitUS 9,054,860 - HTC Corporation / HTC America, Inc. v. Joe Andrew SalazarRehearing deniedPTAB · Feb 25, 2019 · IPR2018-00273 · APJ Matthew J Mcneill · IPR · Rehearing
The Board denied HTC’s rehearing request, leaving institution denied on the Goldstein and Keenan ground for claims 1–7, 27–30, and 34 because the Petition did not explain how the references taught the reprogrammable limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We did not misapprehend or overlook any evidence or argument presented by Petitioner in the Petition. It is Petitioner’s burden to explain how challenged claims are to be construed and how the claims read on the prior art. 37 C.F.R. § 42.104(b)(3)‒(5). Petitioner did not propose construing the term “reprogrammable” to include “that which can be programmed anew or differently” in the Petition. See Paper 1. Nor did Petitioner seek leave to file a reply to the construction for “reprogrammable” proposed by Patent Owner in its Preliminary Response. Instead, these arguments have been raised in the Request for Rehearing for the first time. We could not have misapprehended or overlooked evidence that was not presented by Petitioner in the context of the limitation at issue. Moreover, as explained in the Decision, Petitioner failed to present any analysis or testimony in the Petition that Goldstein and Keenan teach “reprogrammable” IR codes under Patent Owner’s proposed construction, Petitioner’s newly-proposed construction, or any other interpretation of the term “reprogrammable.” Dec. 12‒16. Indeed, Petitioner failed to provide any explicit analysis for the “reprogrammable” limitation in the Petition. See id. As explained in the Decision, Petitioner’s mere citation to Goldstein’s teaching that its universal remote control device is bidirectional and can receive data for programming the device without any explanation as to how this teaching satisfies the “reprogrammable communication protocols” limitation is not sufficient to render obvious claim 1. Id. The Petition is deficient in this manner regardless of the construction of the “reprogrammable” limitation. Accordingly, we are not persuaded that we misapprehended or overlooked any evidence or argument presented by Petitioner in the Petition.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Moreover, as explained in the Decision, Petitioner failed to present any analysis or testimony in the Petition that Goldstein and Keenan teach “reprogrammable” IR codes under Patent Owner’s proposed construction, Petitioner’s newly-proposed construction, or any other interpretation of the term “reprogrammable.” Dec. 12‒16. Indeed, Petitioner failed to provide any explicit analysis for the “reprogrammable” limitation in the Petition. See id. As explained in the Decision, Petitioner’s mere citation to Goldstein’s teaching that its universal remote control device is bidirectional and can receive data for programming the device without any explanation as to how this teaching satisfies the “reprogrammable communication protocols” limitation is not sufficient to render obvious claim 1. Id. The Petition is deficient in this manner regardless of the construction of the “reprogrammable” limitation. Accordingly, we are not persuaded that we misapprehended or overlooked any evidence or argument presented by Petitioner in the Petition.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Claim 1 recites, in relevant part, “said microprocessor creating a plurality of reprogrammable communication protocols for transmission to said external devices” (emphasis added). In our Decision, we noted Petitioner had not proposed an explicit definition of the term “reprogrammable,” but had maintained the term within a proposed construction for a larger claim phrase, which is consistent with construing the term according to its plain and ordinary meaning. Dec. 9. We adopted Patent Owner’s proposed construction, “a program that can be replaced by another” as the plain and ordinary meaning of “reprogrammable.” Id. at 9‒ 10. Petitioner contends the Board’s interpretation of the plain and ordinary meaning of the term “reprogrammable” is incomplete and should include “to program anew or differently.” Req. for Reh’g 6. Petitioner argues this additional language is required for the construction to be consistent with Patent Owner’s Infringement Contentions in related litigation (id. at 6‒9), the ordinary meaning of the term (id. at 9‒11), and the teachings of the ’467 patent (id. at 11‒12).” slip op. at 3
- BurdenDecided for patent owner
“presented by Petitioner in the Petition. It is Petitioner’s burden to explain how challenged claims are to be construed and how the claims read on the prior art. 37 C.F.R. § 42.104(b)(3)‒(5). Petitioner did not propose construing the term “reprogrammable” to include “that which can be programmed anew or differently” in the Petition. See Paper 1. Nor did Petitioner seek leave to file a reply to the construction for “reprogrammable” proposed by Patent Owner in its Preliminary Response. Instead, these arguments have been raised in the Request for Rehearing for the first time. We could not have misapprehended or overlooked evidence that was not presented by Petitioner in the context of the limitation at issue. Moreover, as explained in the Decision, Petitioner failed to present any analysis or testimony in the Petition that Goldstein and Keenan teach “reprogrammable” IR codes under Patent Owner’s proposed construction, Petitioner’s newly-proposed construction, or any other interpretation of the term “reprogrammable.” Dec. 12‒16. Indeed, Petitioner failed to provide any explicit analysis for the “reprogrammable” limitation in the Petition. See id. As explained in the Decision, Petitioner’s mere citation to Goldstein’s teaching that its universal remote control device is bidirectional and can receive data for programming the device without any explanation as to how this teaching satisfies the “reprogrammable communication protocols” limitation is not sufficient to render obvious claim 1. Id. The Petition is deficient in this manner regardless of the construction of the “reprogrammable” limitation. Accordingly, we are not persuaded that we misapprehended or overlooked any evidence or argument presented by Petitioner in the Petition.” slip op. at 3
Claim constructionPatents in suitUS 5,802,467 - Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd.Rehearing deniedPTAB · Oct 11, 2018 · IPR2017-01979 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Huawei’s rehearing request, finding no abuse of discretion in denying institution on grounds 4–6 because the Petition did not adequately explain how to harmonize the references’ conflicting teachings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The 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.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. We deny the Request for Rehearing for the reasons that follow. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited to transmission of control information together with data information. Id. Thus, R1-071000, on its face, is directed to the opposite scenario of R1- 072122, which is directed to transmitting control information without data. Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated control signal transmission with UL data.”)). Even if we were to accept arguendo Petitioner’s first argument that R1-071000 invites skilled artisans to expand and apply the data mapping scheme of R1-072122, such an invitation does not remedy Petitioner’s failure to explain sufficiently how one with ordinary skill in the art would have modified the system of R1- 072122 to transmit control signals with data, contrary to the express teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance, Petitioner does not address how one would reconcile the two references’ diametrically opposed teachings regarding placement of the ACK/NAK. As we stated: Finally, although the cited portions of R1-071000 teach placing data in the symbols directly adjacent to the symbol containing the reference signal, R1-071000 depicts placing the ACK/NAK in the symbols farthest from the symbol containing the reference signal––directly opposite to the cited teachings of R1-072122 describing placing the ACK/NAK in the symbols directly adjacent to the reference signal. Ex. 1008, Figs. 4, 5. Here too, Petitioner and Dr. Akl do not address how or why an ordinarily skilled artisan would have harmonized the disparate teachings of these two references. Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence and explanation, Petitioner’s argument amounts to impermissible hindsight reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Rehearing. Reh’g Req. 4–6. 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.” Id. § 42.71(d). Petitioner identifies a single page of its Petition as “the place where [that argument] was previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of the Petition, recites only a single sentence and string citation related to this argument: “Further, a number of 3GPP contributions, including both R1- 071000 and R1-072122, expressly disclose and teach that it is advantageous to limit the number of different transmission formats due to complexity of UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5; Ex. 1003 ¶ 225). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016) (discussing that a rehearing request is “not intended as a vehicle simply to disagree with [the] outcome or to provide new arguments”). Contrary to Petitioner’s assertions on rehearing, the cited portion of the Petition does not provide sufficient explanation for the following statements made in the Request for Rehearing: that “R1-072122 also expressly teaches that a single mapping scheme for control information is preferred”; that “R1-070998, another contemporaneous 3GPP contribution, provides a similar statement”; or that “skilled artisans would have been motivated to apply the same control mapping scheme regardless of the presence of data.” Compare Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second argument was not presented in its Petition, we do not consider it on rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its declarant Dr. Akl presented the extensive argument that Petitioner now puts forth in its Request for Rehearing, our rules particularly require identification of “the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37 C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,761,130 - Adobe Systems Incorporated v. William GreciaRehearing deniedPTAB · Sep 7, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Adobe’s rehearing request, leaving institution denied on all three § 103 grounds because Petitioner did not show Venkataramu was a publicly accessible printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“accessibility, we note that the Federal Circuit in Blue Calypso, which was decided after these Board decisions, explains that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing, ‘[w]hether . . . through search engines or otherwise,’ is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” 815 F.3d at 1349 (internal citations omitted). The Federal Circuit further explains that the “absence of evidence demonstrating that the website at which the article was located was indexed and thereby findable by an internet search engine” can be overcome, however, by a showing that an ordinarily skilled artisan “would have been independently aware of the [website] as a prominent forum for discussing [the pertinent] technologies.” Id.” slip op. at 8
- BurdenDecided for patent owner
“We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12
- Strike new argumentNew argument disregardedOther
“1016, 2). Relying on FanDuel, Inc. v. CG Tech. Dev., LLC, Case IPR2017- 00902, slip op. at 15 (PTAB Oct. 18, 2017) (Paper 14), Petitioner contends that such evidence is “separate evidence of the public dissemination and availability of [the textbook].” Req. Reh’g 6. This is a new argument, which does not address what we overlooked or misapprehended in our Institution Decision. Petitioner does not indicate where in the Petition or Ms. Manek’s Declaration this argument was raised. In any event, we are not persuaded by Petitioner’s new argument. The panel in FanDuel explained that “[t]he statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’” FanDuel, slip op. at 14 (emphasis added). Here, evidence that the textbook was published in the United States and that unauthorized copying of the textbook was prohibited does not establish when the textbook became publicly accessible.” slip op. at 14
§ 102 anticipationPatents in suitUS 8,402,555 - Adobe Systems Incorporated v. William GreciaRehearing deniedPTAB · Sep 7, 2018 · IPR2018-00419 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Adobe’s rehearing request and left in place the denial of institution because the petition did not sufficiently show Venkataramu was publicly accessible before the patent’s earliest possible effective filing date.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a 2 Ameerally, U.S. Publ’n No. 2006/0212401 A1, published Sept. 21, 2006 (Ex. 1004). 3 Gautier, U.S. Publ’n No. 2005/0021478 A1, published Jan. 27, 2005 (Ex. 1005). 4 Dan Frakes, First Look: iTunes Digital Copy, Macworld, http://www.macworld.com/article/131751/2008/01/digitalcopy.html, last visited Jan. 10, 2017 (Ex. 1006). 5 Zweig, U.S. Publ’n No. 2007/0233606 A1, published Oct. 4, 2007 (Ex. 1008). 6 Suitts, U.S. Publ’n No. 2008/0040379 A1, published Feb. 14, 2008 (Ex. 1009). 7 Kondrk, U.S. Publ’n No. 2004/0254883 A1, published Dec. 16, 2004 (Ex. 1010). clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility, we note that the Federal Circuit in Blue Calypso, which was decided after these Board decisions, explains that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing, ‘[w]hether . . . through search engines or otherwise,’ is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” 815 F.3d at 1349 (internal citations omitted). The Federal Circuit further explains that the “absence of evidence demonstrating that the website at which the article was located was indexed and thereby findable by an internet search engine” can be overcome, however, by a showing that an ordinarily skilled artisan “would have been independently aware of the website as a prominent forum for discussing [the pertinent] technologies.” Id. In this case, that the Internet Archive electronically archived a copy of Venkataramu does not, by itself, mean that Venkataramu was sufficiently indexed on the San Jose State University (SJSU) website or the Internet Archive. Nor does it reveal anything about the search capabilities of the SJSU website or the Internet Archive, or why one with ordinary skill in the art would have even visited either website to find anything. With respect to the SJSU website, Mr. Christopher Butler does not claim to have personal knowledge of the general practices regarding the university website, or the search capabilities of the website. For example, he does not testify as to the procedures, if any, the university uses to index project reports, or the manner, if at all, in which project reports are indexed (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU website, or why an ordinarily skilled artisan would have visited the website to locate Venkataramu. We note Petitioner’s assertion in its Petition that Venkataramu was “indexed as a Masters’ Thesis,” (Pet. 30), which, of course, bears no relationship to the subject of Venkataramu. See In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). As for the Internet Archive, we note that Mr. Butler testifies that “[v]istors to the Wayback Machine can search archives by URL (i.e., a website address),” (Ex. 1024 ¶ 3), which, similarly, bears no relationship to the subject of Venkataramu. Mr. Butler does not testify as to any other way to locate Venkataramu on the Wayback Machine, or as to why a visitor would have visited the Wayback Machine to locate Venkataramu.” slip op. at 9
§ 102 anticipationPatents in suitUS 8,533,860 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Dec 4, 2017 · IPR2017-00788 · APJ Jameson Lee · IPR · Rehearing
The Board denied Mastercard’s rehearing request, leaving in place the denial of institution on claims 1–26 because the Petition did not adequately explain how the prior art met the electronic identification reference limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “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 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). For reasons discussed below, we decline to modify the Decision to institute trial on any claim. Thus, Petitioner’s Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board concluded that the Petitioner’s evidence showed steps 1–5 and subpart (a) of step 6. (Decision pp. 32– 33). However, the Board determined that Petition did not show that the prior art taught subpart (b) of step 6, specifically “branding metadata of the encrypted digital media by writing . . . (b) the electronic identification reference into the metadata.”” slip op. at 3
- BurdenDecided for patent owner
“Petitioner in the Petition regarding subpart (b) of step 6 of independent claims 1 and 15, including the state of the art at the time of the claimed invention. Rather, as we indicated in the Decision, Petitioner has not adequately explained why that which Petitioner regards as the electronic identification reference written into the metadata, as recited in subpart (b) of step 6, is or comes from the login information supplied by the user, i.e., the user’s email address, that the iTunes® system had requested and received according to the prior steps of claims 1 and 15. Dec. 32–33. That is what claims 1 and 15 require, and sufficient explanation is lacking in the Petition.” slip op. at 3
NonePatents in suitUS 8,402,555
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.