- Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Jun 5, 2019 · IPR2018-01685 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution because the petition did not persuasively map Barriga-Caceres to the construed federated-environment limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Petitioner’s stated basis for rehearing is that we “misapprehended or overlooked that Barriga-Caceres’s disclosure would” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–2, 4–11, and 15–20 (“the challenged claims”) of U.S. Patent No. 7,631,346 (Ex. 1001, “the ’346 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). On April 11, 2019, we entered a Decision on Institution (Paper 10, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’346 patent on any of the asserted grounds. Dec. 22. Petitioner timely filed this Request for Rehearing of the Decision. Paper 11 (“Request” or “Req. Reh’g.”).” slip op. at 2
- BurdenDecided for patent owner
“(“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). However, as the Supreme Court has counseled, “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’ [35 U.S.C.] § 312(a)(3). From the outset, we see that Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355, 200 L. Ed. 2d 695 (2018). Although we are sympathetic to the timing of the Federal Circuit’s construction, Petitioner does not argue persuasively, or provide authority to the effect, that we should reformulate the Petition to fit this claim construction. The additional explanation Petitioner now offers, as discussed below, concerning how the teachings of Barriga-Caceres are mapped to the “federated computing environment” limitation using the claim construction from the Federal Circuit, was not presented in the Petition, and Petitioner did not attempt to make it available to us before our statutory deadline. That is, we could not have misapprehended or overlooked arguments and evidence not presented in a cohesive manner in the Petition.” slip op. at 6
NonePatents in suitUS 7,631,346 - Abs Global, Inc. v. Cytonome/St, LLCRehearing deniedPTAB · Dec 14, 2018 · IPR2017-02163 · APJ Timothy J Goodson · IPR · Rehearing
The Board denied ABS Global’s rehearing request, leaving in place its denial of institution because the Petition did not show that Weigl teaches the claimed focusing regions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he 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.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“our Decision Denying Institution (Paper 11, “Decision” or “Dec.”). In that Decision, we concluded that Petitioner did not show a reasonable likelihood of prevailing in showing that any of the challenged claims of U.S. Patent No. 7,311,476 B2 (“the ’476 patent”) are unpatentable on any of the asserted grounds. See Dec. 22–27. Petitioner requests rehearing, arguing that we misapprehended or overlooked disclosures in Weigl,1 which was the primary reference Petitioner relied on in the asserted grounds. See Req. Reh’g 1. For the reasons set forth below, Petitioner’s request for rehearing is denied.” slip op. at 2
- BurdenDecided for patent owner
“helpful context, but in analyzing whether a petitioner has shown that the cited reference teaches a particular limitation, we look primarily to the section of the petition presenting arguments regarding that limitation. This flows from “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim,’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)), as well as the requirement that “the Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). See also Sirona Dental Systems GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would . . . not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory. . . .”). Here, the Request does not point to, and we do not find, any discussion of a constant-depth configuration in Weigl, in the Petition’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. Instead, as noted above, the Petition’s annotated drawings illustrating its contentions regarding these limitations show channel depth increasing, and the center fluid maintaining its dimensions as it flows downstream. The Request also argues that, leaving aside the constant-depth configuration, even a channel with increased depth would still serve to accelerate and narrow the center fluid. Req. 7–10. But here again, Petitioner did not present any such argument in the portion of its Petition arguing the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. The Request points to the summary of Weigl in the “Background of the Technology” section of the Petition. Req. 7–10 (citing Pet. 10–11). As such, we are not persuaded that our Decision overlooked or misapprehended Petitioner’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations.” slip op. at 3
NonePatents in suitUS 7,311,476 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Apr 24, 2018 · IPR2017-00632 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied Fisher & Paykel’s rehearing request, leaving institution denied for claims 22 and 37 because it found no overlooked or misapprehended matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“claims 22 and 37 with the identified group of non-instituted claims. In our Decision, we expressly stated that “[c]laims 22 and 37 each require the second frame to include contact points that prevent rotation of the first frame with respect to the second frame.” Dec. 22. As Petitioner correctly points out, claims 22 and 37 depend from instituted claims 17 and 32, and further recite that “the second frame includes contact points [contacting the first frame] to prevent rotation of the first frame with respect to the second frame.” Req. Reh’g. 3–4 (citing Ex. 1001, 21:21–23, 22:44–47). Claim 17 requires “an opening located between the annular connection and the upper support member, the opening providing access to the first frame.” Ex. 1001, 21:4–7. Claim 32 similarly requires “a separate opening located between the annular opening and the upper support member, the separate opening providing access to the first frame while the mask assembly is fully assembled.” Id. at 22:28–31. Petitioner relied on its arguments directed to Decision, however, we were not persuaded by Petitioner’s primary argument directed to claim 81. Dec. 22. Namely, that Berthon-Jones and Barnett teach retaining the upper portion of opening 536 as a separate opening to limit or prevent unwanted rotation. See Pet. 43–44. Petitioner has not directed us to any disclosure in Berthon-Jones indicating that opening 536 performs an anti-rotation function. Rather, the function of securing the second frame to the first frame, as disclosed in Berthon-Jones, is performed by receiving holes 526, which snap-fit over connecting members 524. See Ex. 1002 ¶ 182, Fig. 51; see [Paper 7], 22–23. Dec. 18–19. Nonetheless, we were persuaded by Petitioner’s alternative argument, namely that “opening 526 located between the annular opening and upper member in the modified second frame corresponds to the ‘separate opening’ limitation.” Dec. 19 (citing Pet. 45; Ex. 1002 ¶ 182, Fig. 51). And, for the same reasons as stated with respect to claim 81, we were “persuaded at this preliminary stage of this proceeding that Petitioner has established a reasonable likelihood of prevailing on its contention that claims 17 and 32 would have been obvious over Berthon-Jones, Barnett, and Lithgow.” Id. at” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Decision, however, we were not persuaded by Petitioner’s primary argument directed to claim 81. Dec. 22. Namely, that Berthon-Jones and Barnett teach retaining the upper portion of opening 536 as a separate opening to limit or prevent unwanted rotation. See Pet. 43–44. Petitioner has not directed us to any disclosure in Berthon-Jones indicating that opening 536 performs an anti-rotation function. Rather, the function of securing the second frame to the first frame, as disclosed in Berthon-Jones, is performed by receiving holes 526, which snap-fit over connecting members 524. See Ex. 1002 ¶ 182, Fig. 51; see [Paper 7], 22–23. Dec. 18–19. Nonetheless, we were persuaded by Petitioner’s alternative argument, namely that “opening 526 located between the annular opening and upper member in the modified second frame corresponds to the ‘separate opening’ limitation.” Dec. 19 (citing Pet. 45; Ex. 1002 ¶ 182, Fig. 51). And, for the same reasons as stated with respect to claim 81, we were “persuaded at this preliminary stage of this proceeding that Petitioner has established a reasonable likelihood of prevailing on its contention that claims 17 and 32 would have been obvious over Berthon-Jones, Barnett, and Lithgow.” Id. at” slip op. at 4
- Expert testimonyPatent owner expert creditedDecided for patent owner
“bracket or frame structure” was a known modification with predictable results.” Req. Reh’g. 5–9. Primarily, our determination that we were “not persuaded that a ‘bracket or frame structure’ would have been a predictable option for incorporating Barnett’s collar 34 into Berthon-Jones’s mask.” Id. at 5 (citing Dec. 18). By way of example and citing the testimony of Mr. Eaton, we stated by that “adding a ‘bracket or frame structure’ would have been just ‘[a]nother possible solution.’” Dec. 18. slip op. at 6
§ 103 obviousnessPatents in suitUS 8,944,061 - Groupon, Inc. v. International Business Machines Corp.Rehearing deniedPTAB · Dec 7, 2017 · IPR2017-01158 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Groupon’s rehearing request, leaving institution denied on both § 103 grounds because the Petition did not adequately explain how the combinations would provide a federated computing environment.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- BurdenDecided for patent owner
“we noted that the only claim element that Petitioner mentions as missing in Sunada and Mellmer is a “federated computing environment.” Inst. Dec. 11, 16. We found that Petitioner’s proffered rationale for combining Sunada or Mellmer with the LA Specifications to arrive at the claimed invention was inadequate because Petitioner did not address how modifying Sunada or Mellmer to implement Liberty Alliance’s method of exchanging attributes would provide a federated computing environment (i.e., the missing claim element). Id. at 11, 16.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“new argument that Petitioner presents in order to offer more explanation, which does not address what we overlooked or misapprehended in our Institution Decision. In its Petition, Petitioner proposed combining the references by “us[ing] the methods for transferring attributes described in the LASpecs in the exchanges specifically described in Sunada and Mellmer.” Pet. 21–23. Petitioner explained that such combination “would allow a POSITA to obtain predictable results,” which Petitioner identified explicitly as “the transfer of information described in Sunada and Mellmer” (id. at 23), not as “a compliant implementation of Sunada or Mellmer to operate in a federated computing environment” (Req. Reh’g 7). At this stage, it is too late for Petitioner to add further explanation in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 9
NonePatents in suitUS 7,631,346 - Cree, Inc. v. Optolum, Inc.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,242,028 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Nov 29, 2017 · IPR2017-00372 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving institution denied for claims 1–83 because the petition failed to show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot reached
“II. DISCUSSION 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of Radermacher and Kenna in which a cutting guide (as in Radermacher) is aligned intra-operatively (as in Kenna), but that the Decision did not address a combination of Radermacher and Kenna in which there is angular alignment (as in Kenna) when the cutting guide is planned pre-operatively (which Petitioner argues to have been taught in Radermacher). First, we regard this latter argument to be a new argument. The argument in the Petition is reproduced above. We conclude that the Petition provided inadequate argument and reasoning for combining the references in this manner, i.e., to take the intra-operative teachings of Kenna and apply them pre-operatively. Neither the Petition nor Declaration explain how this would have been accomplished or persuade us that such a combination would have been obvious (without intra-operative adjustment, as taught in Kenna). In particular, the Petition does not explain adequately how a person of ordinary skill would have included Kenna’s angle adjustment teaching in Radermacher’s prosthesis with a patient-specific surface, rather than rotating Kenna’s cutting guide intra-operatively. Although we appreciate Petitioner’s argument that the combination does not require bodily incorporation of one prior art device into another, we are not persuaded that the Petition adequately set forth what that combination would be, or how it would be achieved. See, e.g., Pet. 43–45 (quoting Kenna and asserting it would have been obvious to combine the teachings of the prior art).” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s reliance on Exhibits 1051, 1054, 1055, and 1057 is misplaced because the Petition did not contain developed arguments with respect thereto, and we regard this as a new argument. As such, we determine that we did not overlook or misapprehend any arguments with respect to Exhibits 1051, 1054, 1055, and 1057. To the extent that Petitioner relies on Kenna for the argued limitation, we address that contention below.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,377,129 - Wendt Corporation v. Iqasr, LLCInstitution deniedPTAB · Sep 28, 2017 · IPR2017-01080 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–15, 18–20, and 22 were unpatentable over Jody or Jody and the 1998 Handbook.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petition under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. A.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“automobile shredder residue,” “sorting, non-ferrous recovery system,” “magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable materials,” and “air-locked automobile shredder residue sorting, non-ferrous recovery system” require construction. Pet. 12–35. In turn, Patent Owner proposes its own construction for those same terms. Prelim. Resp. 3–24. Having considered the evidence presented, we determine that we need only address the meaning of “magnetic fuzz” for purposes of this Decision. See Vivid Techs., 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 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“The Petition also lacks an explicit inherency analysis. As Petitioner acknowledges in its legal background, inherent disclosure “necessarily describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if Petitioner established that magnetic fuzz is likely present and sorted using Jody’s process, that does not establish inherency. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” (citation omitted)). To the extent that Petitioner’s argument that magnetic fuzz “would be part of the plastic-rich stream and initially would be sorted from the PUF, fines, etc.,” amounts to an inherency argument, it lacks adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added). Petitioner’s assertion fails to address why magnetic fuzz would be present in Jody’s automobile shredder residue in the first place, much less that Jody’s process necessarily must sort that magnetic fuzz. Given Jody’s failure to disclose magnetic fuzz expressly, Petitioner needed to do more than merely assume that magnetic fuzz is present and assert that magnetic fuzz “would be” sorted, without explaining why this must be the case.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Discussion To establish anticipation under 35 U.S.C. § 102, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must “enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929, 940–44 (CCPA 1962).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,132,432 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher & Paykel’s rehearing request, leaving institution denied because it found no abuse of discretion in its assessment of the claim limitation and Berthon-Jones.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which 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 motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). And, because Fisher seeks rehearing of our Decision on Institution, 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 may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment 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). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the “fixed, non-adjustable position” claim limitations. See Pet. 23–25 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00215 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher’s rehearing request, leaving trial denied because Fisher did not show an abuse of discretion in the findings on the fixed, non-adjustable position limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which 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 motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). And, because Fisher seeks rehearing of our Decision on Institution, 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 may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment 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). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that a prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“discretion. First, we do not understand Fisher as making this argument in the Petition. That is, we interpret Fisher to argue in the Petition that after a user adjusts the fit of mask 510 using adjustment wheels 530 to a desired configuration, the user will not further adjust the mask, and cushion/secondary frame 514 is in a fixed, non-adjustable position relative to chassis 512. See Pet. 27. We cannot misapprehend or overlook an argument that is not made. Even if the argument as Fisher articulates here is the argument in the Petition, we are not persuaded that we overlooked Berthon-Jones disclosing the “fixed, non-adjustable position” claim limitations, as substantial evidence supports our findings. Berthon-Jones’s adjustment is not the “wiggle” that ResMed referenced in its Preliminary Response, which would be associated with manufacturing tolerances and flexible materials that may allow for some small movement between the components.4 See Prelim. Resp. 15. Instead, Berthon-Jones discloses that its adjustment wheel 530 is used to adjust the sealing force or fit of the cushion against a user’s face— that is, the reason for adjustment wheel 530 as part of the mask is to adjust the cushion relative to the frame. See Ex. 1002 ¶ 186; see also ¶ 168 (“[Figures] 41 through 53 illustrate additional embodiments which allow 4 We stress that we do not decide whether the “fixed, non-adjustable position” claim limitations would encompass a structure with the “wiggle” that ResMed referenced in its Preliminary Response, as we do not need to reach that issued in deciding this Request.” slip op. at 10
- Strike new argumentNew argument disregardedDecided for patent owner
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the 3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the fixed, non-adjustable position” claim limitations. See Pet. 25–27 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 9,381,316 - Panduit Corp. v. Corning Optical Communications LLCRehearing deniedPTAB · Jul 27, 2017 · IPR2017-00528 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 14-40, 46-53, and 55-62 because the cited art did not show the claimed adapter number, spacing, or density.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Inter Partes Review1 (Paper 7, “Decision” or “Dec.”) of U.S. Patent No. 8,712,206 B2 (Ex. 1001, “the ’206 patent”). Paper 10 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). The burden of showing that our Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“teach or suggest a row of six side-by-side adapters which served as the basis for Petitioner’s contention that the numerical limitations of the independent claims of the ’206 patent were taught or suggested. Dec. 21 (“Petitioner does not direct us to, nor do we discern, any teaching or suggestion in Rapp (or other cited art) of using ‘a row of six side-by-side adapters using standardized LC adapters’ or ‘12 fiber optic adapters over 78.0 mm’ as argued by Petitioner.”). See also Dec. 24, 26. In the Request for Rehearing, Petitioner does not point to any related teaching or suggestion in the cited art that we misapprehended or overlooked. To the contrary, Petitioner argues: “[t]he Board overlooked or misapprehended the full scope of the teachings of Rapp, instead focusing on its exemplary embodiment showing nine adapters or blanks.” Req. Reh’g. 3. Most significantly, in the Request for Rehearing, Petitioner fails to direct our attention to any teaching or suggestion in the cited art of a row of six side-by-side adapters which the Board misapprehended or overlooked.” slip op. at 3
NonePatents in suitUS 8,712,206
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.