- PTAB · Apr 30, 2018 · IPR2017-01944 · APJ James B Arpin · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving in place the denial of institution because Mammano was not shown to be a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“Reh’g Req. 4–5 (emphasis added). Regardless whether it “would be reasonable to conclude” that certain facts exist, Petitioner did not make these arguments in its Petition, and it was not error to fail earlier to draw these conclusions, and we decline to draw these conclusions now.” slip op. at 6
§ 102 anticipation - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01309 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Freebit’s rehearing request and left in place the denial of institution on claims 1–3, 5, 6, 8–11, and 13 based on the deficient obviousness showing and Tan antedating.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a 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, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of 1 IPR2017-01307 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01307 and IPR2017-01308. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01307 and IPR2017-01308. discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundTeaching away not found
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Initially, we note that Petitioner did not raise these arguments anywhere in its Petition or its authorized Reply to Patent Owner’s Preliminary Response. Not only did Petitioner fail to raise the issue of “Peeler diligence,” but Petitioner’s Request for Rehearing does not include a single citation to its Petition or to its Reply on this point. Thus, Petitioner’s Request for Rehearing fails to identify the place where each matter that allegedly was overlooked or misapprehended was previously addressed in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,036,853 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01307 · APJ James B Arpin · IPR · Rehearing
The Board denied Freebit’s rehearing request, leaving institution denied for claims 1–4, 6–9, 13, and 17 because the obviousness challenge lacked a supported reason to combine and Tan was antedated.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a 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, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of 1 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01308 and in IPR2017-01309. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01308 and IPR2017-01309. discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’253 patent. See Inst. Dec. 41 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 37–39. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 41. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“neither Petitioner nor its declarant explains why a general need to secure an earpiece in an ear would lead to adding a positioning and retaining structure in the context of Sapiejewski’s teachings, when that function allegedly already is provided by the Sapiejewski device, besides seeking the benefits described in the ’253 patent – a reason tainted by hindsight. Inst. Dec. 45–46 (citations omitted). Consequently, we considered fully Petitioner’s arguments and Dr. Staab’s testimony, including any supporting evidence, in view of Sapiejewski’s disclosure. Based on this consideration, we agreed with Patent Owner that “Petitioner relies on a far too general reason to combine the references and engages in impermissible hindsight as to the particular combination of the teachings of Sapiejewski and Howes.” Id. at 45.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“suppression or concealment may be overcome with evidence that the reason for the delay was to perfect the invention.” 843 F.2d 1364, 1367 (Fed. Cir. 1988); see Inst. Dec. 33. Nevertheless, the delay could not be excused (1) if “the delay is caused by working on refinements and improvements which are not reflected in the final patent application,” or (2) if “the activities which caused the delay go to commercialization of the invention.” Lutzker, 843 F.2d at 1367. In its Reply, Petitioner focused on the length of the delay between the actual reduction to practice and the filing of a patent application. Reply 3–4. Petitioner, however, made only cursory and conclusory reference to Patent Owner’s activities3 between the actual reduction to practice and the filing of a patent application. See Reply 4 (“Moreover, Mr. Annunziato’s testimony (¶ 6) that his team put in hundreds (if not thousands) of hours trying out and testing different designs for ear interfaces is not credible.”). Petitioner now argues that “all the alleged work carried out by [Patent Owner] to complete the [printed circuit board] is irrelevant to the suppression/concealment issue because it was not reflected in the final patent application, and rather, was relevant simply for commercialization.” Reh’g Req. 12. We continue to disagree.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,311,253 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01308 · APJ James B Arpin · IPR · Rehearing
The Board denied Freebit’s rehearing request, leaving in place the denial of institution on claims 1–11 because the arguments did not show the Board overlooked or misapprehended the record or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a 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, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
NonePatents in suitUS 8,254,621 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Dec 4, 2017 · IPR2017-00649 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution on claims 1–30 because Petitioner did not show that the Board overlooked or misapprehended its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision Denying Institution considered Petitioner’s argument regarding combining Bonella’s power reduction technique and Bonella’s power loss algorithm as it was presented in the Petition. Thus, Petitioner has not established the proposition that the Board overlooked or misapprehended some evidence in the record. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Thus, we are not persuaded by this argument.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“disclosed the specific feature alleged to be obvious. Req. Reh’g 12. We disagree. The Decision Denying Institution found that Long and Ashmore did not provide motivation for the specific combination advanced by Petitioner, stating “Petitioner does not point to a motivation to adjust the frequency of the memory banks specifically, simply a general motivation to reduce battery power during power loss.” Inst. Dec. 13. Thus, the Decision Denying Institution stated “we are not persuaded Ashmore [or Long] supports that contention that running at the frequency associated with Power Level 4 during a power loss would have been obvious.” Id. 13–14. “[T]o establish obviousness based on a combination of the elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.” In re Kotzab, 217 F.3d 1365, 1370 (Fed.Cir.2000) (citation omitted)(emphasis added)). “A determination of obviousness cannot be reached where the record lacks ‘explanation as to how or why the references would be combined to produce the claimed invention.’” Hyundai Motor Co. v. Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24, 2017) (Paper 12) (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). The Decision Denying Institution properly followed this precedent in requiring a specific motivation to make the combination alleged by Petitioner to meet the claimed combination.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to institute review of claims 1–30.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,301,833 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - Department Of Justice v. Envisionit, LLCInstitution deniedPTAB · May 3, 2017 · IPR2017-00186 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 14, 15, 23, 27, or 30 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are not persuaded by Patent Owner’s argument. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 4. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.8 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and 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.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties propose competing constructions of “broadcast.” Pet. 10– 11; Prelim. Resp. 14–19. Patent Owner also proposes a construction for “validating,” recited in claim 14. Prelim. Resp. 19–21. Nevertheless, we need not construe these or any other terms for the purposes of this Decision to resolve the parties’ dispute. See Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of its declarant, Mr. Randall A. Snyder, contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 9 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of ordinary skill in the art.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,103,719 - Department Of Justice v. Envisionit, LLCInstitution deniedPTAB · May 1, 2017 · IPR2017-00183 · APJ Bryan F Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 11–13, 42, 47, and 57 unpatentable on the asserted obviousness and anticipation grounds.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are not persuaded by Patent Owner. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 4. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.1 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“1. Petitioner has not shown that Gundlegård was publicly accessible Gundlegård states on its face that it is a master’s thesis kept at Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and 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.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION Petitioner has not established a reasonable likelihood it would prevail in showing that claims 1, 11–13, 42, 47, and 57 are unpatentable. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is not instituted for claims 1, 11–13, 42, 47, and 57 of U.S. Patent No. 7,693,938 B2.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 9–10 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); 3 The record does not include allegations or evidence of objective indicia of nonobviousness. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 16
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,693,938 - Apple Inc. v. Immersion CorporationRehearing deniedPTAB · Apr 27, 2017 · IPR2016-01777 · APJ Minn Chung · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because the Petition did not analyze the determining a press limitation as an integral whole.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“construe the “determining a press limitation” or interpreted the limitation to require the first two conditions recited in the limitation be maintained for the duration of a first interval. See Dec. 7–8. Rather, we found that, as illustrated in Figure 3 of the ’507 patent, “the meaning of the ‘first interval has elapsed’ condition as an integral part of the ‘determining a press limitation’ may be very different from its meaning in isolation.” Id. at 14–15 (emphasis added). We determined, based on the plain language of the claim limitation and the disclosure in the Specification, that the “determining a press limitation” recites a single concept of determining a press when all three conditions recited in the limitation are satisfied. Id. at 11–12. We found, therefore, a proper obviousness analysis must address the “determining a press limitation” as an integral whole, including the meaning of the “first interval has elapsed” condition as a part of the “determining a press limitation,” and show how a reference or a combination of references teaches or renders the limitation as a whole obvious. Id. at 12, 14–15 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). We found that the Petition did not present such an analysis. Id. at 12, 15.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“an analysis. Instead, Petitioner argues that, because the claims use the openended transitional phrase “comprising,” the broadest reasonable interpretation of the “determining a press limitation” “requires only that there be at least one scenario in which the satisfaction of [the three recited conditions] . . . results in a determination of a press.” Req. Reh’g 8–10. Petitioner, however, does not identify where in the Petition this argument was presented. Petitioner’s argument appears to be a new argument presented for the first time in its Request for Rehearing to address the deficiencies in the Petition that were identified in our Decision. It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Hence, had Petitioner intended to argue, based on the open-ended transitional phrase “comprising” used in the claims, an interpretation of the “determining a press limitation” that differs from the meaning indicated by the plain language of the claim limitation or the disclosure in the Specification, such an analysis should have been made explicit in the Petition. A rehearing request is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. Simply put, we could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition.” slip op. at 4
- ExcludeNot reached
“In support of its claim construction argument, Petitioner submits an Administrative Law Judge’s order on claim construction from the related U.S. International Trade Commission proceeding, which was not evidence of record at the time of our Decision. Req. Reh’g 7 (citing Ex. 1010, 59). In general, new evidence is not allowed in a Request for Rehearing, absent showing of good cause. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Petitioner does not explain why there is good cause to admit Exhibit 1010 with its Request for Rehearing. Nonetheless, even when we consider Exhibit 1010, it would not change the outcome of the Petitioner’s Request for Rehearing because we could not have misapprehended or overlooked evidence that was not presented or developed in the Petition.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,749,507 - Department Of Justice v. Envisionit, LLCInstitution deniedPTAB · Apr 26, 2017 · IPR2017-00180 · APJ David C Mckone · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1, 2, 4, 17, and 23 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are not persuaded by Patent Owner. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 3. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.1 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“1. Petitioner has not shown that Gundlegård was publicly accessible Gundlegård states on its face that it is a master’s thesis kept at Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and 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. The Petition does not provide a detailed statement of Petitioner’s arguments as to the public accessibility of Gundlegård. Rather, Petitioner simply states “[a]s documented by the declaration of Amelia Nuss (Ex. 1021), the thesis was published at least as early as October 27, 2003.” Pet. 14. The detailed basis for Petitioner’s contention is stated in the Nuss Declaration. Patent Owner argues that this constitutes an improper incorporation by reference of arguments from the Nuss Declaration into the Petition, in violation of 37 C.F.R. § 42.6(a)(3). Prelim. Resp. 20–21 n.4. We share Patent Owner’s concern. Nevertheless, we agree with Patent Owner that the Nuss Declaration, even if considered, does not support a finding that Gundlegård was publicly available.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although the parties propose competing constructions of “broadcast” (Pet. 7–8; Prelim. Resp. 14–18), we need not construe this or any other term for the purposes of this Decision to resolve the parties’ dispute. See Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 7 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); 4 The record does not include allegations or evidence of objective indicia of nonobviousness. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 15
Claim construction§ 102 anticipationcites GrahamPatents in suitUS 9,136,954
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.