- Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). 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. United States, 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). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - Firstspear, LLC v. Lineweight, LLCRehearing deniedPTAB · Mar 25, 2020 · IPR2019-01170 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show that combining Fegen and Stevens would have made the claimed openings compatible with the asserted properties.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). 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. United States, 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“motivated to adhere Fegen’s exterior garment layer to a substrate in order to provide a substrate material having water-proofing or scent blocking properties as taught by Stevens.” Pet. 31–32 (citing Ex. 1002 ¶ 55; Ex. 1006, 2:1–4, 3:50–53). In addition, the Petition asserts that one of ordinary skill in the art “would understand that the slits in Fegen extend all the way through the exterior layer and the substrate in order to permit attachments to be more easily secured to Fegen’s garment.” Id. at 35 (citing Ex. 1002 ¶ 62; Ex. 1005, Fig. 3). In the Decision, we determined that Petitioner had failed to establish sufficiently that it would have been obvious to one of ordinary skill in the art to combine Fegen and Stevens in the manner proposed. Dec. 14–16. In particular, we determined that providing slits or openings in the substrate of the proposed combination of Fegen and Stevens “would defeat, or at least greatly diminish, any water-proofing or scent blocking properties of the substrate.” Id. at 15. Thus, we disagreed with Petitioner’s contention that one of ordinary skill in the art would have been motivated to add a substrate to Fegen’s garment for the purpose of providing water-proofing or scent blocking properties. Id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We disagree with this broad assertion because the Petition does not demonstrate sufficiently why providing openings in the substrate, as the claims require, would not have led one of ordinary skill in the art to consider such openings detrimental to the rationale of providing water-proofing or scent blocking properties. Petitioner’s assertion also ignores the fact that the corresponding openings in the substrate would allow sweat and odor to pass through freely, thereby decreasing the effectiveness of water-proofing and scent blocking properties. Although no evidence of record appears to state expressly that openings of the size claimed would allow sweat and odor to pass freely through the substrate, this fact would have been readily apparent to one of ordinary skill in the art. Thus, the Rehearing Request fails to demonstrate that a reasonable fact finder could not have arrived at this fact, such that our determination is supported by substantial evidence. See OSI Pharm., 939 F.3d at 1381–82.” slip op. at 4
- BurdenDecided for patent owner
“Petitioner also argues that “[t]here is no evidence supporting a difference in effectiveness of the water-proofing and scent blocking properties of the substrate whether the substrate is a solid sheet of material or the substrate contains slots or openings in the same location as the exterior layer.” Reh. Req. 3. This argument, however, attempts to improperly shift the burden of persuasion away from Petitioner. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion rests with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Thus, Petitioner has the burden of presenting evidence supporting its assertion that there is no difference in effectiveness of the water-proofing and scent blocking properties of the substrate with or without openings.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,173,436 - Unified Patents Inc. v. American GNC CorporationRehearing deniedPTAB · Mar 17, 2020 · IPR2019-00505 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Unified Patents’ rehearing request and left institution denied because it had not shown JSC was reasonably likely to qualify as a publicly accessible printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). 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. United States, 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).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“likelihood” standard applicable to decisions to institute an inter partes review. We agree with Petitioner that the “reasonable likelihood” standard applies to the issue of whether a reference asserted in a petition for inter partes review qualifies as a prior art printed publication. See id. at 3. As the Board held in a recent precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 4
- BurdenInstitution denied meritsDecided for patent owner
“are factual disputes that reach beyond the ‘reasonable likelihood’ standard and are more appropriately developed during an instituted trial.” Id. We disagree with this broad assertion because it ignores the fact that, in this case, as explained on pages 15‒16 of the Decision, Petitioner’s evidence does not meet a minimum threshold showing to even present a factual dispute as to availability and dissemination of the reference. See Hulu, Paper 29 at 13 (establishing that the Petition must identify, with particularly, evidence sufficient to establish a reasonable likelihood of public accessibility before the critical date).” slip op. at 5
§ 102 anticipationPatents in suitUS 6,411,871 - Flexitallic Investments, Inc. v. Eriks N.V.Rehearing deniedPTAB · Mar 28, 2018 · IPR2017-01968 · APJ Scott C Moore · IPR · Rehearing
The Board denied Flexitallic’s rehearing request and left in place the denial of institution because the petition did not adequately show that the Bond References taught or suggested all limitations of claims 1–5.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. The Decision Denying Institution In the Decision, we found that Petitioner had failed to make an adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“First and foremost, Petitioner does not provide any citation to the Petition or Dr. Green’s Declaration to demonstrate that it previously argued that limitation 1.3 requires a “flange” that “extends radially inward along the entire circumferential inner surface of the core.” See Reh. Req. 5. We could not have misapprehended or overlooked an argument that Petitioner failed to make. 37 C.F.R. 42.71(d). We also note that claim limitation 1.3 does not recite a flange that extends “along the entire circumferential surface of the core” (see Ex. 1001, 8:60–62), and that the claim construction portion of the Petition did not argue that limitation 1.3 should be construed to require a flange that extends radially inward “along the entire circumferential surface of the core” (see Pet. 14–20). In addition, Petitioner fails to identify any testimony from Dr. Green that the Bond References teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core” of the type Petitioner now seemingly concedes is necessary for those references to teach or suggest an “intermediate zone.” See Reh. Req. 5. Though Dr. Green testifies regarding a single-projection embodiment in which the projection “extend[s] radially inward from the core inner surface,” Dr. Green never testifies that the single projection of this embodiment extends radially inward “along the entire circumferential inner surface of the core.” See Ex. 1012 ¶¶ 97–99. Our Decision did not overlook or misapprehend Dr. Green’s testimony. To the contrary, we considered and analyzed Dr. Green’s testimony, and determined that Dr. Green’s opinions were not adequately supported by the evidence of record. See Dec. 16–17 (analyzing the portions of the Bond References cited by Dr. Green, and rejecting Dr. Green’s assertion that these portions of the Bond References disclose, teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core.”) Petitioner’s argument that we improperly disregarded Dr. Green’s testimony thus has no merit.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,388,924 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00780 · APJ James A Worth · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no overlooked or misapprehended arguments concerning the denied grounds for claims 9, 10, 12–19, and 38.
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 Industries, 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 successMotivation not foundNot shown unpatentable
“The panel addressed Petitioner’s theory of modifying Radermacher’s teachings with Kenna’s teachings on, inter alia, pages 20–21 of the Decision, as referred to by Petitioner immediately above. Id.; see also id. at 16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21. Accordingly, we conclude that the Decision did not misapprehend or overlook any arguments in the Petition.” slip op. at 5
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,062,302 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00779 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving in place the denial of institution on claims 9, 10, 12–19, and 38.
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 Industries, 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an inter partes review of claims 1–3, 5–8, 11, 20, 21, 24, 25, 28–37, 39–43, 47, and 95–125 as obvious over Radermacher, Alexander, and Woolson, and denied institution of the remaining grounds presented in the Petitions. Dec. 1, 3, 6, 39–40. For example, we found that Petitioner had failed to make a threshold showing that claims 13, 18, and 38 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, Woolson, and Kenna, or over the combination of Radermacher, Fell, Woolson, and Kenna. See id. at 16–23. Additionally, we found that Petitioner had failed to make a threshold showing that claims 9, 10, and 12 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, and Woolson. See id. at 23–24. We also found that Petitioner had failed to make a threshold showing that claims 14–17 and 19 of the ’302 patent are unpatentable under” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21.” slip op. at 6
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,062,302 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00778 · APJ James A Worth · IPR · Rehearing
The Board denied rehearing, leaving in place the institution decision that instituted review of some claims and denied the remaining grounds, including challenges to claims 9, 10, 12–19, and 38.
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 Industries, 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
Discretionary denialPatents in suitUS 8,062,302 - PTAB · Apr 3, 2017 · IPR2016-01516 · APJ John A Hudalla · IPR · Rehearing
The Board denied LG’s rehearing request and left in place the denial of institution on claims 1–12 and 58–67 because neither four-reference obviousness ground established each challenged reference’s prior-art status.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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. United States, 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied institution on both grounds presented in the Petition. Dec. 13. In particular, we found that LG had failed to make a threshold showing that one reference from each of its two obviousness grounds—namely, Callaghan Book and Microsoft SMB—qualified as prior art under 35 U.S.C. § 102(b). See id. at 11, 13. Accordingly, we determined that LG had not established a reasonable likelihood that it would prevail in asserting that claims 1–12 and 58–67 would have been obvious over the cited references. Id. LG filed a Request for Rehearing asking that we reconsider our decision not to institute a trial on these obviousness grounds. Paper 24 (“Req. Reh’g”).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“requirements are met.1 Specifically, we may not institute inter partes review unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added). LG did not meet this threshold requirement in its Petition, because LG merely asserts that Callaghan Book and Microsoft SMB are printed publications under 35 U.S.C. § 102(b) with no supporting analysis whatsoever. See Pet. 5. In the absence of any showing that these references qualify as printed publications, and based on the relevant dates for Callaghan Book, we found that LG had not met the threshold showing for institution under § 314(a). See Dec. 10–13. Thus, we are not persuaded by LG’s arguments. III. CONCLUSION For the reasons above, we conclude that LG has not met its burden of showing an abuse of discretion, or that we misapprehended or overlooked any of LG’s arguments, in our determinations (1) that LG put forth two fourreference obviousness grounds, and (2) that LG failed to establish the prior art status of one reference in each of the grounds, namely, Callaghan Book and Microsoft SMB. See Dec. 4–5, 10–13. We, therefore, deny LG’s request to modify our determinations and institute an inter partes review of the challenged claims in the ’511 patent.” slip op. at 7
- BurdenDecided for patent owner
“numbered grounds in LG’s chart really represents eight distinct challenges, meaning the Petition includes sixteen grounds of unpatentability. Under this logic, eight grounds would remain even if LG failed to establish the prior art status of Callaghan Book in “Ground 1” or Microsoft SMB in “Ground 2.” See Req. Reh’g 4–5. LG’s argument belies its requirement to “[p]rovide a statement of the precise relief requested for each claim challenged” in the Petition, including identifying “[t]he specific statutory grounds . . . on which the challenge to the claim is based and the patents or printed publications relied upon for each ground.” 37 C.F.R. § 42.104(b) (emphases added); see also 35 U.S.C. § 312(a)(3) (a petition is required to “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). LG’s failure to identify specifically and clearly its alleged sixteen grounds is further illustrated by its color-coded Exhibit 1037, wherein LG invites us to parse the discussion of “Ground 1” and “Ground 2” in the Petition by color to construct the eight permutations of grouped references that do not include Callaghan Book or Microsoft SMB. We decline to comb through the Petition to determine the strongest arguments or particular combinations of references that might survive LG’s failure to establish the prior art status of certain references. Instead, we fairly read LG’s “Ground 1” and “Ground 2” to be two grounds. We also stated that each of these two grounds relied on the secondary references throughout the analysis (see Dec. 4–5), which is supported by LG’s color-coded Exhibit 1037. Accordingly, we properly interpreted the Petition as including two four-reference obviousness grounds. Id. at 5. Under these circumstances, LG’s arguments do not persuade us that we misapprehended or overlooked additional grounds in our Decision on Institution.” slip op. at 4
§ 102 anticipationPatents in suitUS 7,149,511 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Jun 21, 2016 · IPR2015-00454 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Apple’s rehearing request and left in place its denial of institution on claim 18 over Rosen and Hartrick, finding procedural defects and an inadequate obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing a decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in” the petition. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“failure to comply with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Dec. 4–5. In particular, we determined that: (1) “[t]he entire Petition is riddled with vague, nested string citations to broad swaths of the references, the [Declaration of Alan Sherman (‘Sherman Declaration’)], and internal cross-references to whole sections of the Petition” (id. at 5); (2) the Petition utilizes a convoluted structure resulting in an “unpatentability analysis [that] is at least two or three levels removed from the actual disclosure of the references” (id. at 6–7); and (3) the Petition relies on an improper incorporation by reference of the Sherman Declaration4 (id. at 7– 8). In addition to these procedural defects, we also determined “that the Petition’s obviousness analysis does not provide sufficient information to enable us to perform a proper Graham analysis, is driven by improper hindsight, and lacks sufficient articulated reasons with rational underpinnings to support the modifications it proposes.” Id. at 9; see also id. at 9–15 (discussing deficiencies of the obviousness analysis).” slip op. at 3
- BurdenDecided for patent owner
“To succeed on its Rehearing Request, Petitioner must show where we misapprehended or overlooked arguments in making the aforementioned determinations and that we abused our discretion in reaching each of these determinations. As we explain below, Petitioner has not done so.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As we explained in our Decision, even Petitioner’s attempt to classify the changes as limited to four modifications is unconvincing. Dec. 12–14. Having considered Petitioner’s arguments on rehearing, we reaffirm our conclusion in the Decision that the Petition does not explain sufficiently “why a person of ordinary skill would simultaneously make all of the many particular proposed changes [(i.e., ‘modifications’)] and implementation choices to combine Rosen and Hartrick,” for the reasons explained in the Decision. Id. at 13.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,269,576 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Rehearing deniedPTAB · Mar 1, 2016 · IPR2015-01318 · APJ Jameson Lee · IPR · Rehearing
The Board denied NVIDIA’s rehearing request and left in place the denial of institution for claims 1–15 because the Petition did not explain Yamakawa’s differing embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
NonePatents in suitUS 8,252,675
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