- 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 - Unified Patents Inc. v. Multimedia Content Management LLCInstitution deniedPTAB · Mar 5, 2018 · IPR2017-01934 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the challenged claims under either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1‒5, 9, 11‒13, 19, 23‒27, and 32‒34 of U.S. Patent No. 8,799,468 B2 (“the ’468 patent”). Multimedia Content Management LLC (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), which requires that Petitioner demonstrate a reasonable likelihood that it would prevail with respect to at least one challenged claim, we deny the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes constructions for the following terms, each of which is recited in independent claims 1 and 23: “service provider network,” “controller instructions,” and “gateway unit.” Pet. 13‒17. Patent Owner proposes constructions for the same terms, as well as “generate [controller instructions],” which is recited in claims 1 and 23. Prelim. Resp. 4‒12. No term requires an express construction. We address Petitioner’s proposed construction of “service provider network” below in the context of how the prior art applies to the challenged claims.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposals are similar, although Petitioner proposes that a person of ordinary skill would possess more specific experience. Even under Petitioner’s articulation of the level of ordinary skill, with such particularized experience, we conclude that the Petition does not set forth a reasonable likelihood of prevailing. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s reasoning is not persuasive. Petitioner discusses Freund’s embodiment disclosed in Figure 3A, where supervisor 323 is connected to client 310 over LAN 320, which is separated from Internet 340 by firewall 330. However, Freund also discloses an embodiment where the supervisor node (supervisor 373) is located remotely from client 310. Ex. 1004, Fig. 3B. In this “ISP-based embodiment,” client 310 is connected to decentralized installations called Points-of-Presence (POPs), such as POP 320a. Id., 21:57‒60. Client 310 may be connected to POP 320a directly or through a LAN. Id., 21:60‒64. POP 320a is connected to ISP Authentication Server 371 and ISP Supervisor Server 372 over Internet 340. Id. ISP Supervisor Server 372 executes the supervisor component 373. Id. In this embodiment, supervisor 373 provides rules to POP 320, which in turn monitors content requests submitted by client 310. Id., 22:7‒21. Notably, contrary to the hypothetical suggested by Petitioner, client 310 does not receive rules from supervisor 373 over Internet 340. Id. Instead, POP 320a receives rules from supervisor 373 over Internet 340. Id. POP 320a uses these rules to manage the access to content granted to client 310. Id. Thus, Freund discloses an embodiment with widely dispersed geographic locations, but does not disclose client 310 (the “gateway unit”) receiving rules from the supervisor node over Internet 340 in this embodiment (“configured to receive the controller instructions from the controller node through the service provider network”). Dr. Hutchinson does not address this alternate embodiment, which operates differently than the hypothetical system proposed by Petitioner. See Ex. 1003 ¶¶ 102‒103. To the contrary, Patent Owner’s expert, Mr. Williams, testifies that to the extent an organization has multiple premise locations where each contains a LAN, none of these locations contain a “service provider network” over which the “gateway unit” receives “controller instructions,” as claimed. Ex. 2001 ¶¶ 114‒115. To the extent the opposing testimony of Dr. Hutchinson and Mr. Williams identifies a genuine issue of material fact, we have viewed that issue in the light most favorable to Petitioner. Nevertheless, because of the deficiencies in Dr. Hutchinson’s testimony, we give greater weight to the testimony of Mr. Williams. Accordingly, Petitioner’s argument that it would have been obvious in a system with geographically dispersed clients and supervisors to modify Freund’s teachings such that client 310 would receive rules from supervisor 323 over Internet 340 is unpersuasive because it is not supported by persuasive evidence and is contrary to the teachings of Freund.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 8,799,468 - Securenet Technologies, LLC v. Icontrol Networks, Inc.Rehearing deniedPTAB · Feb 8, 2018 · IPR2016-01909 · APJ Ken B Barrett · IPR · Rehearing
The Board denied SecureNet’s rehearing request, leaving intact its denial of IPR because the petition did not persuasively show that Johnson’s icons were the claimed objects maintained on the security server.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in the record. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). With this in mind, we address the arguments presented by Patent Owner in turn.” slip op. at 2
- BurdenDecided for patent owner
“illogical, and Petitioner now asserts that “figures are meant to be exemplary” and concludes that Johnson’s Figure 3 does not show all of the icons available. Req. Reh’g 6–7. Petitioner’s resort to the speculative argument that the depiction of, for example, a single window icon in Johnson’s Figure 5 is exemplary of multiple, non-depicted window icons highlights the correctness of our determination that the evidence is too unclear for Petitioner to have met its burden.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Pet. 29; see also Dec. 12 (quoting the same). In the Decision, we noted that “[t]he cited expert testimony appears to be the same assertion with little elaboration and explanation for the bases of the opinion.” Dec. 12 (citations omitted). We also noted that, in its Preliminary Response, Patent Owner argued that the expert testimony was “bald opinion,” and that Johnson does not describe the nature of the icons. Id. (quoting Prelim. Resp. 18). We further stated:” slip op. at 3
NonePatents in suitUS 8,073,931 - 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 - PTAB · Feb 7, 2018 · IPR2017-01025 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing of its decision denying institution because the petition did not sufficiently show that Aboul-Hosn linked the pump embodiments or provide a rationale to combine them.
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 unpatentableNot shown unpatentable
“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 7,022,100 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.No claims unpatentablePTAB · Feb 1, 2018 · IPR2016-01440 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 4–20, and 28–42 were not shown unpatentable because Myers did not establish axial translation, and Myers with Bostock did not cure that deficiency.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“radially” in the Petition. In its Reply, Petitioner equates “radially” to “outwardly” and “axially” to “downwardly.” Pet. Reply 7. Patent Owner contends that “axially and radially” would have been understood by a person of ordinary skill in the art “to refer to movement relative the body and oriented relative to the axis of the body.” PO Resp. 19 (citing Ex. 2018 ¶ 82). In particular, Patent Owner contends that “axial” refers to “movement along or parallel to the axis of the body, and that “radial” refers to “the direction perpendicular to the axis of the body.” PO Resp. 20. Patent Owner contends its interpretation is consistent with the Specification of the ’099 patent and is supported by both its expert, Mr. Underwood, and Petitioner’s expert, Mr. Shale. Id. at 18–21 (citations omitted). For example, Mr. Shale testified that “‘[r]adially’ basically means left to right within the tubular body,” and “‘axially’ means up and down within the tubular body.” Ex. 2021, 189:5–7. Patent Owner further notes that Figures 4, 5, 11, and 12 of the ’099 patent illustrate arms 520 moving axially and radially relative to body 510. PO Resp. 20. In its Reply, Petitioner argues that “[c]ontrary to Patent Owner’s assertion, claim 1 of the ’099 [p]atent does not require that the body 10 be the frame of reference for the axial and radial movement.” Pet. Reply 13 n.3. Petitioner, however, cites no persuasive evidence to counter Patent Owner’s proposed construction. Contrary to Petitioner’s assertion, Mr. Shale agreed that “radially” corresponds to “outward from the body,” and that “axially” corresponds to “up and down of the body.” Ex. 2021 190:4–19. Consistent with Mr. Shale’s testimony, Petitioner’s analysis purports to show that Myers discloses movement of moveable arms (slips 30) “both axially and radially relative to the body 10 [of Myers].” Pet. 19– 20. Petitioner is not alleging movement of the slips of Myers relative to a feature other than the body of Myers or in some other frame of reference. See Tr. 10:1–21. Thus, based on the evidence discussed above, we determine “translates axially and radially,” as recited in claim 1, means “moves parallel to and perpendicular to the body” and does not encompass movement consisting of only rotation about a pivot point. slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The steps discussed above address how slips 30 of Myers are deployed, but do not explain expressly whether slips 30 move axially relative to body 10 during deployment. With regard to the slips, Myers further provides that: [Slips 30] are positively movable laterally relative to the expander upon relative longitudinal movement between the expander and slips by inclined spline connections between the slips and expander, provided by oppositely directed side tongues 32 on each slip sliding in companion grooves 33 in the expander on opposite sides of slots 34 in the expander in which the slips are disposed. The lower ends of the slips 30 are coupled for movement longitudinally with one another by being connected to a slip ring 35 having generally T-shaped slots 36 therein receiving companion T-shaped heads 37 on the lower portions of the slips. Thus, the slips 30 move longitudinally jointly with the slip ring 35, although they are still permitted to move radially or laterally inwardly and outwardly of the slip ring, upon relative longitudinal movement between the slips 30 and expander 26. Ex. 1004, 3:2–17. In this passage, the movement of the slips includes “longitudinal movement,” which we understand generally corresponds to a vertical direction, as opposed to lateral movement in a horizontal direction. However, the movement is described relative to expander 26, not relative to body 10. See Pet. 13 (using “lateral” consistent with the horizontal extent and “longitudinal” consistent with the vertical extent). Thus, this passage also does not explain expressly whether slips 30 move axially relative to the body during deployment.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“C. ASSERTED OBVIOUSNESS OVER MYERS AND BOSTOCK Petitioner contends claims 4, 33, and 34, each of which depends from claim 1, would have been obvious over Myers and Bostock. Pet. 24–26. According to Petitioner, “[e]ach of claims 4, 33, and 34 recites biasing either a sleeve or a movable arm to a collapsed position.” Id. at 24. Petitioner relies on Bostock as disclosing a spring for biasing. Id. As to the limitations of claim 1 from which claims 4, 33, and 34 depend, including the requirement of “one moveable arm translates axially and radially,” Petitioner relies only on the contentions it set forth under its anticipation analysis with respect to claim 1. Because Petitioner does not rely on Bostock to teach the recited feature “one moveable arm translates axially and radially,” does not argue the feature would have been obvious over the combination, and, for the reasons provided above, has not shown by a preponderance of the evidence that Myers teaches the feature, Petitioner has not shown by a preponderance of the evidence that claims 4, 33, and 34 of the ’099 patent would have been obvious over Myers and Bostock.” slip op. at 25
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Mr. Shale expresses the opinion that “slips 30 move both axially and radially relative to the body 10, along ‘generally T-shaped slots 36’ that are linear and angled relative to the axial direction,” we find that testimony to be conclusory and entitled to little weight, in part because this testimony does not account for the upward movement of setting sleeve 40. See Ex. 1010 ¶ 53 (quoting Ex. 1004, 3:11); see also In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); 37 C.F.R. § 42.65(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.”). Accordingly, we find Mr. Shale’s declaration fails to provide persuasive support for Petitioner’s contention that Myers discloses “one moveable arm translates axially and radially,” as required by claim 1, beyond what Myers, itself, discloses. We find more persuasive Mr. Underwood’s testimony, on behalf of Patent Owner, that Myers fails to disclose axial movement of slips 30. Ex. 2018 ¶¶ 90–107. According to Mr. Underwood: slots [36 of Myers] are shown as angled relative to the slip ring 35. However, though the slips may move downward (axially) relative to the slip ring 35 as the slips move outward (radially), the slip ring 35 at the same time moves upward (axially) relative to the body. As such, the angle of the slots 36 within the slip ring 35 is not, itself, indicative of the overall movement of the slips. Id. ¶ 91. Mr. Underwood further reasons that “as the slip ring moves upwardly, the movement of the slips relative to the body in the axial direction is zero due to the slips sliding downward in the slots 36 relative to the slip ring 35 in equal proportion.” Id. ¶ 94. Mr. Underwood also” slip op. at 20
Patent outcomesUS 7,314,099 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,314,099 - PTAB · Jan 3, 2018 · IPR2017-01205 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied rehearing in five proceedings, upholding denial of institution because the petitions did not sufficiently support the asserted obviousness challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 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 3
- 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) › Graham factors (scope of art, differences, level of skill)Not reached
“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
§ 103 obviousnessPatents in suitUS 9,561,314 - PTAB · Jan 3, 2018 · IPR2017-01202 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Petitioner’s rehearing requests, finding no abuse of discretion in denying institution because the petitions did not sufficiently support their challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 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 3
- 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
“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. 11), 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. 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. 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.7” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,545,468 - PTAB · Jan 3, 2018 · IPR2017-01201 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because the petitions did not sufficiently support the asserted challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 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 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. 11), 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. 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. 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.7” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,545,468
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.