- PTAB · Jun 19, 2019 · IPR2018-01159 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied West’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In a request for rehearing, we do not review the merits of the Institution Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked. 37 C.F.R. § 42.71(d) (“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,586,011 - 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 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00475 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request and left in place denial of institution because the Petition did not show Cheyer was publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00384 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–18 because the petition did not show Cheyer was publicly accessible and qualified as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,523,061 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00474 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied on all challenged claims because Cheyer was not shown reasonably likely to have been publicly accessible as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied the Petition as to all claims. We determined that Petitioner had failed to satisfy its burden of demonstrating a reasonable likelihood of showing, under 35 U.S.C. § 102(b), that its principal reference, Cheyer,1 was disseminated or publicly accessible prior to one year before the effective filing date of the ’021 patent and, therefore, did not qualify as prior art under 35 U.S.C. § 102(b). Dec. 6–15.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website. Id. at 14.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00476 · APJ Debra K Stephens · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 1–27 because Cheyer was not shown reasonably likely to qualify as publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot reached
“how to retrieve Cheyer, included in Moran’s footnote citation, did not persuade us that Cheyer was publicly accessible (id. at 15; see Pet. 3)). Importantly, we note Petitioner has not shown the link provided in the footnote worked, or that the link, which is to a “Bibliography” page (see Ex. 1029), provided Cheyer’s paper or a publicly accessible link to Cheyer’s paper. In particular, Petitioner does not provide a copy of this Bibliography page to show what actually was on this page and how or if an ordinarily skilled artisan would have been able to access Cheyer’s paper from the Bibliography page. In our Decision, we noted Petitioner failed to provide testimonial or other evidence that the link provided in the article actually worked at the relevant time period, what content was included at the linked website, how one would find Cheyer after selecting the link, or which version of Cheyer allegedly was accessible via the link (Dec. 15). We also explained that this latter showing is of special importance here because Petitioner acknowledges that there were several different versions of Cheyer (id. at 12 (citing Pet. 3)).” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“professional computer scientist or engineer directed to find an article on a section of a website would have been unable to do so with reasonable diligence” (id. at 7–8). Petitioner’s argument fails for several reasons. First, it is a new argument not appropriately raised on rehearing. Second, Petitioner identifies no support in the record for the assertion that Cheyer was actually available (see Ex. 2001 and 2002) or that an ordinarily skilled artisan would have been able to find Cheyer, only Petitioner’s speculation.2 Finally, this argument overlooks that the burden is on Petitioner, not the Board, to demonstrate a reasonable likelihood of prevailing on this issue.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,757,718 - 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 - HTC Corporation / HTC America, Inc. v. Joe Andrew SalazarInstitution deniedPTAB · Jul 9, 2018 · IPR2018-00273 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7, 10, 14, 17, 23, 26–32, and 34 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an ordinarily skilled artisan would combine Goldstein and Keenan to satisfy the limitation “a microprocessor creating a plurality of reprogrammable communication protocols.” Instead, the Petition provides conclusory assertions that the combination of Goldstein and Keenan teaches this limitation. See Pet. 20‒21, 23‒25. Similarly, Dr. Wolfe offers conclusory testimony that Goldstein teaches this limitation. See Ex. 1003, ¶¶ 41, 43. Dr. Wolfe does not testify that Keenan teaches this limitation. See id. at ¶¶ 41‒43. Petitioner’s conclusory assertions that the applied prior art teaches the “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed are entitled to little weight. See 37 C.F.R. § 42.56(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). Accordingly, Petitioner has failed to explain how the applied prior art references teach or suggest “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed. For these reasons, we conclude the Petition fails to show a reasonable likelihood of establishing that the combination of Goldstein and Keenan teaches or suggests a “microprocessor creating a plurality of reprogrammable communication protocols,” as recited in claim 1. We, therefore, conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“The ’467 patent does not define the term “reprogrammable” in the specification, and neither party argues the patentee disavowed the full scope of the claim in the specification or during prosecution. Accordingly, the plain and ordinary meaning of the term “reprogrammable” applies. The issue, then, is what is the plain and ordinary meaning of “reprogrammable”? Patent Owner proposes that the plain and ordinary meaning of “reprogrammable” is “a program that can be replaced with another.” Prelim. Resp. 3. This definition is supported by the dictionary cited by Patent Owner, consistent with the usage of the term in claim 1, and consistent with the objectives of the ’467 patent. See Ex. 1001, 2:47‒50 (“It is another object of the invention to provide a means for loading the microprocessor external memory of the handset or base station with updated or accessory programs and/or data bases.”); see also id. at 2:47‒64. Accordingly, we construe the term “reprogrammable” to mean “a program that can be replaced with another.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“an ordinarily skilled artisan would combine Goldstein and Keenan to satisfy the limitation “a microprocessor creating a plurality of reprogrammable communication protocols.” Instead, the Petition provides conclusory assertions that the combination of Goldstein and Keenan teaches this limitation. See Pet. 20‒21, 23‒25. Similarly, Dr. Wolfe offers conclusory testimony that Goldstein teaches this limitation. See Ex. 1003, ¶¶ 41, 43. Dr. Wolfe does not testify that Keenan teaches this limitation. See id. at ¶¶ 41‒43. Petitioner’s conclusory assertions that the applied prior art teaches the “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed are entitled to little weight. See 37 C.F.R. § 42.56(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). Accordingly, Petitioner has failed to explain how the applied prior art references teach or suggest “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed. For these reasons, we conclude the Petition fails to show a reasonable likelihood of establishing that the combination of Goldstein and Keenan teaches or suggests a “microprocessor creating a plurality of reprogrammable communication protocols,” as recited in claim 1. We, therefore, conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Moreover, neither the Petition nor Dr. Wolfe’s testimony address how an ordinarily skilled artisan would combine Goldstein and Keenan to satisfy the limitation “a microprocessor creating a plurality of reprogrammable communication protocols.” Instead, the Petition provides conclusory assertions that the combination of Goldstein and Keenan teaches this limitation. See Pet. 20‒21, 23‒25. Similarly, Dr. Wolfe offers conclusory testimony that Goldstein teaches this limitation. See Ex. 1003, ¶¶ 41, 43. Dr. Wolfe does not testify that Keenan teaches this limitation. See id. at ¶¶ 41‒43. Petitioner’s conclusory assertions that the applied prior art teaches the “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed are entitled to little weight. See 37 C.F.R. § 42.56(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). Accordingly, Petitioner has failed to explain how the applied prior art references teach or suggest “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed. For these reasons, we conclude the Petition fails to show a reasonable likelihood of establishing that the combination of Goldstein and Keenan teaches or suggests a “microprocessor creating a plurality of reprogrammable communication protocols,” as recited in claim 1. We, therefore, conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,802,467 - Abiomed, Inc., Abiomed R&D, Inc., And Abiomed Europe GmbH v. Maquet Cardiovascular, LLCRehearing deniedPTAB · Feb 7, 2018 · IPR2017-01209 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because the petition did not sufficiently show that Aboul-Hosn disclosed or supported combining the challenged embodiments.
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 is based on an erroneous interpretation of 2 The ’1025 Petition challenges claims 16–18 of the ’100 patent. 3 The ’1208 Petition challenges claims 7–9 and 11–15 of the ’437 patent. 4 The ’1209 Petition challenges claims 5, 10, 16, and 25 of the ’437 patent. 5 Petitioner filed a Request for Rehearing in each of the above-captioned proceedings. The Requests for Rehearing effectively are identical. This Decision specifically references the Request from IPR2017-01025 although the discussion applies equally to Petitioner’s Requests in IPR2017-01208 and IPR2017-01209. Citations are to IPR2017-01025, unless otherwise indicated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. Reh’g 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24. . . .” Id. at 12–13. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.6” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,597,437 - PTAB · Feb 7, 2018 · IPR2017-01208 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied the rehearing request, leaving institution denied because Petitioner did not sufficiently show that Aboul-Hosn disclosed or supported combining the cited embodiments.
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 is based on an erroneous interpretation of 2 The ’1025 Petition challenges claims 16–18 of the ’100 patent. 3 The ’1208 Petition challenges claims 7–9 and 11–15 of the ’437 patent. 4 The ’1209 Petition challenges claims 5, 10, 16, and 25 of the ’437 patent. 5 Petitioner filed a Request for Rehearing in each of the above-captioned proceedings. The Requests for Rehearing effectively are identical. This Decision specifically references the Request from IPR2017-01025 although the discussion applies equally to Petitioner’s Requests in IPR2017-01208 and IPR2017-01209. Citations are to IPR2017-01025, unless otherwise indicated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. Reh’g 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24. . . .” Id. at 12–13. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.6 Contrary to Petitioner’s contentions, we considered the arguments and supporting evidence presented in the Petition and determined it insufficient to institute trial. See, e.g., Dec. 10 (“Ultimately, the Petition is deficient because of the failure to explain sufficiently and support the challenges therein.”). We are not persuaded that we abused our discretion in reaching that determination.7 Disagreeing with our Decision is not, by itself, an appropriate basis for rehearing.” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,597,437
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.