- PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2
Claim constructionPatents in suitUS 7,072,849 - Toyota Motor Corporation v. General Electric CompanyRehearing deniedPTAB · Jun 14, 2019 · IPR2019-00018 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Toyota’s rehearing request, leaving the denial of institution on claims 16–19 in place because the Petition did not explain how the proposed combination supplied the claimed second DC/DC conversion device.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Mitsutani’s inverter also should be included in its proposed combination of Robinson and Mitsutani. Req. Reh’g 4. Petitioner admits that “the Petition did not call it out separately.” Id. However, a request for rehearing is not an opportunity to supplement the Petition, or submit new arguments that were not made in the Petition, after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed prior art combination teaches or suggests “a second DC/DC conversion device coupleable to an internal charging device,” as recited in independent claim 16. Dec. 11−15. In its Petition, Petitioner asserts that Robinson discloses the claimed “second DC/DC conversion device.” Pet. 31−32 (citing Ex. 1006 ¶ 145, Fig. 4). Petitioner modifies Robinson’s Figure 4 to “include an additional 4−34 V scavenger power converter for device port 4.” Id. Petitioner’s modified Figure 4 of Robinson is reproduced below with annotations added by Petitioner (id.).” slip op. at 3
- BurdenDecided for patent owner
“The burden to prove unpatentability is on the petitioner, not on the patent owner or the Board. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (noting that the petitioner in an inter partes proceeding has the initial burden of production and the burden” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“internal charging device” to device port 4 (light pink). Pet. 31. Petitioner asserts that “[t]his second 4−34V scavenger power converter is ‘coupleable to an internal charging device,’ as claimed, because the combined Robinson/Mitsutani system teaches a motor generator that is internal to the vehicle and would be connected to Robinson’s device port 4.” Id. at 32 (citing Ex. 1002 ¶ 76) (emphases added). slip op. at 4
§ 103 obviousnessPatents in suitUS 9,821,668 - Toyota Motor Corp. v. GE Hybrid Technologies, LLCRehearing deniedPTAB · May 9, 2019 · IPR2019-00015 · APJ Lynne H Browne · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–16 because the petition did not adequately explain why the prior art would be modified to meet the vehicle-control limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. PRINCIPLES OF LAW A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. 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). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,409,052 - 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 - Necksgen, Inc. v. Simpson Performance Products, Inc.Rehearing deniedPTAB · Jul 25, 2018 · IPR2018-00133 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show the asserted art taught claim 1[d] or establish motivation to combine with a reasonable expectation of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision was 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). Additionally: “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
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“the Preliminary Response. In our Decision, we determined that “[w]e do not need to construe expressly any claim terms for purposes of this Decision” because it did not appear, from the arguments presented, that any claim terms were in dispute. Dec. 6. When we considered the parties’ positions in reaching our Decision, we were aware that the term “tether” was defined in the ’529 patent, even though Petitioner did not state that expressly. In other words, we understood, and now explicitly determine, that the patentee acted as his own lexicographer by setting forth a specific definition for “tether” in the ’529 patent. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (if the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs”) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Motivation to Combine & Reasonable Expectation of Success Petitioner contends that we abused our discretion by failing to consider the appropriate claim scope when evaluating motivation to combine and reasonable expectation of success. Req. Reh’g 10–14. First, as discussed above, we did not fail to consider the appropriate claim scope. Second, we have now set forth that claim scope expressly. In light of our discussion above, our analysis regarding motivation to combine and reasonable expectation of success is no different from that which we set forth in our Decision. Dec. 11–15. Petitioner’s reiteration of the same positions set forth in Petition does not persuade us that we abused our discretion in finding that Petitioner has not established a reasonable likelihood of demonstrating that one of ordinary skill in the art would have been promoted to modify and combine the teachings as proposed by Petitioner with a reasonable expectation of success. Accordingly, we are unpersuaded by Petitioner’s argument that we abused our discretion with respect to these issues.” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,351,529 - Adobe Systems Incorporated v. William GreciaInstitution deniedPTAB · Jun 21, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show Venkataramu was a publicly accessible printed publication, defeating every obviousness ground for claims 1–26.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“We agree with Patent Owner. To determine a date on which Venkataramu was publicly accessible, we look to evidence of the SJSU library’s cataloging and indexing practices, as well as any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. Neither Petitioner nor Mr. Butler offers sufficient evidence that Venkataramu was sufficiently indexed or catalogued at SJSU for access. That the Internet Archive captured and archived a copy of Venkataramu does not mean, by itself, that Venkataramu was sufficiently indexed or catalogued at SJSU. Nor does it reveal anything about the search capabilities of the SJSU library website. Mr. Butler does not claim to have personal knowledge of the general library practices of the SJSU library, or the search capabilities of the SJSU library website. For example, he does not testify as to the procedures, if any, the university uses to index or catalog project reports, or the manner, if at all, in which project reports are indexed or cataloged (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU library website. Further, neither Petitioner nor Mr. Butler introduces any evidence that Venkataramu was actually disseminated to any interested skilled artisans prior to the earliest possible effective filing date for the ’555 patent. Additionally, Petitioner has not explained why making a copy of Venkataramu accessible on the Internet Archive constitutes publication of Venkataramu on the Internet Archive as of October 2, 2008. In that regard, we note that Mr. Butler’s Affidavit does not indicate that the archived files are searchable through a subject matter index or catalog.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of the foregoing, we determine that Petitioner has not shown sufficiently that Venkataramu was publicly accessible prior to the earliest possible effective filing date for the ’555 patent. Therefore, Petitioner has not shown that Venkataramu qualifies as a printed publication. Because each of Petitioner’s asserted grounds relies on Venkataramu, Petitioner has not demonstrated a reasonable likelihood of showing that any of claims 1–26 would have been obvious over any of the asserted grounds. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’555 patent. V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 13
§ 102 anticipationPatents in suitUS 8,402,555 - Nevro Corp. v. Boston Scientific Neuromodulation Corp.Rehearing deniedPTAB · May 31, 2018 · IPR2017-01831 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1, 3, 14, and 15 because Nevro did not sufficiently show Schulman rendered the no-stimulation voltage-measurement limitation obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“Schulman simply discloses that (a) when no stimulation is provided a request is made for a battery recharge and (b) when a battery recharge occurs, battery voltage is measured. Based on that alone, it is unclear when, or even if, the requested recharge will, in fact, ever occur, or whether it will occur when there is no stimulation provided. Arguably, a battery recharge normally follows a battery recharge request. But there is insufficient evidence that a battery recharge request, when there is no stimulation due to low voltage, necessarily leads to the battery being recharged, let alone recharged when there is no stimulation due to low voltage. As we stated in the Decision, “[i]ndeed, we find that the fact that microstimulator 100 has ceased operation when it emits a status signal (due to the low voltage condition) suggests the opposite; that is, the battery is not being recharged and is not performing any operation aside from emitting a status signal, which would include measuring the voltage of the rechargeable battery.” Dec. 15– 16. Accordingly, even Petitioner’s current position lacks sufficient evidence to support Petitioner’s contention that Schulman renders obvious the claimed subject matter whereby “voltage is measured when no stimulation is being provided by the electronic subassembly.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The Petition went no further. No explanation was given as to how one of ordinary skill in the art, given that Schulman discloses (a) requesting battery recharge via emitted periodic signals when no stimulation is provided due to low battery and (b) monitoring (and measuring) voltage during recharge, would have been led to measure voltage “when no stimulation is being provided by the electronic subassembly,” as claimed. The Petition did not explain, for example, as Petitioner now contends, that “[a]t some point, [Schulman’s] recharge request will be honored. And when recharging commences from that low voltage, zero stimulation condition, Schulman will begin measuring voltage where there is still no stimulation.” Req. 3. We could not have misapprehended or overlooked this explanation, as it was not given.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,437,193 - Nevro Corp. v. Boston Scientific Neuromodulation Corp.Rehearing deniedPTAB · Mar 1, 2018 · IPR2017-01811 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied rehearing of the institution denial, finding Petitioner had not shown that Holsheimer disclosed an electrode array detachably connected to the IPG for claims 8 and 18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are unpersuaded that we misapprehended or overlooked Petitioner’s position. Rather, our Decision addresses expressly each aspect of Petitioner’s argument. For example, the Decision relies upon Holsheimer’s Figures 19 and 20, which depict embodiments of Holsheimer’s implantable pulse generator. Dec. 10– 11. As explained in the Decision, Holsheimer discloses that a series of wires 80A– 80F connect the implantable pulse generator’s outputs 72, 74, 76, 78 to electrode array 38. Id. at 10–11 (citing Ex. 1004, 7:17–20, 7:23–28, 7:47–57). Thus, we did not misapprehend or overlook Holsheimer’s disclosure that the implantable pulse generator and electrode array are “connected.” Req. 3–4. Our Decision also states that these portions of Holsheimer “disclose an apparently permanent, unitary connection with wires 80A–F.” Dec. 11. We understand that Holsheimer does not utilize the word “permanent,” see Req. 4, however, as stated in our Decision, “the Petition does not provide any supporting evidentiary basis for [the] otherwise conclusory assertion that wires 80 are detachable from either electrode array 38 or from pulse generator 14.” Dec. 11.” slip op. at 3
- BurdenDecided for patent owner
“position. Rather, our Decision addresses expressly each aspect of Petitioner’s argument. For example, the Decision relies upon Holsheimer’s Figures 19 and 20, which depict embodiments of Holsheimer’s implantable pulse generator. Dec. 10– 11. As explained in the Decision, Holsheimer discloses that a series of wires 80A– 80F connect the implantable pulse generator’s outputs 72, 74, 76, 78 to electrode array 38. Id. at 10–11 (citing Ex. 1004, 7:17–20, 7:23–28, 7:47–57). Thus, we did not misapprehend or overlook Holsheimer’s disclosure that the implantable pulse generator and electrode array are “connected.” Req. 3–4. Our Decision also states that these portions of Holsheimer “disclose an apparently permanent, unitary connection with wires 80A–F.” Dec. 11. We understand that Holsheimer does not utilize the word “permanent,” see Req. 4, however, as stated in our Decision, “the Petition does not provide any supporting evidentiary basis for [the] otherwise conclusory assertion that wires 80 are detachable from either electrode array 38 or from pulse generator 14.” Dec. 11.” slip op. at 3
NonePatents in suitUS 6,895,280 - Yahoo! Inc. v. Almondnet, Inc.Rehearing deniedPTAB · Feb 5, 2018 · CBM2017-00047 · APJ Michael W Kim · CBM · Rehearing
The Board denied Yahoo!’s rehearing request, leaving in place the denial of institution on the § 101 challenge to claims 1, 2-4, 11-13, 16-17, and 20-22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 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
“matter, resolution of this issue in Petitioner’s favor is not dispositive, as Petitioner still failed to account sufficiently for the terms “offsite” and “targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“matter, resolution of this issue in Petitioner’s favor is not dispositive, as Petitioner still failed to account sufficiently for the terms “offsite” and “targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect.” slip op. at 6
§ 101 eligibilityPatents in suitUS 8,244,586
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.