- Delta Electronics, Inc. v. Vicor Corp.Institution deniedPTAB · May 24, 2024 · IPR2024-00227 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–7 unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . 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). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review. 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the manufacture of power converters or printed circuit board design for power converters,” but acknowledges that “[a]dditional education might compensate for less work experience, and vice-versa.” Pet. 14 (citing Ex. 1013, 79). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. Patent Owner’s witness, Dr. Rivas-Davila, asserts that he applies Petitioner’s definition. Ex. 2001 ¶ 77. We find Petitioner’s definition of the level of ordinary skill in the art to be consistent with the problems and solutions disclosed in the ’761 patent and prior art of record, and adopt it as our own for purposes of this Decision. See Okajima, 261 F.3d at 1355.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Ex. 1001, 28:13–33. The court’s analysis of “plurality” in Apple applies here. Consistent with Apple and other precedent of our reviewing court, we interpret “plurality” to mean two or more. See Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327–28 (Fed. Cir. 2001) (“In accordance with standard dictionary definitions, we have held that ‘plurality,’ when used in a claim, refers to two or more items, absent some indication to the contrary.”); York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term [‘plurality’] means, simply, ‘the state of being plural.’”). And as explained above, neither the ’761 patent nor its prosecution history indicates that “a plurality of power semiconductor devices” as used in claim 1 refers to a subset, rather than all, of the power semiconductor devices in the power converter. See Ex. 1001, 23:24–42, 24:7–25:32; generally, Ex. 1004. As discussed in more detail below, Petitioner maps “plurality of power semiconductor devices” to a subset of the power semiconductor devices in the device disclosed in Ericsson-BMR, implicitly interpreting this language to mean less than all of the power converter power semiconductor devices of the power converter. Petitioner’s interpretation that “plurality of power semiconductor devices” is satisfied by a subset of the power semiconductor devices does not accord with the Federal Circuit’s interpretation of “plurality” as set forth in Apple and is at odds with the requirement that “the power semiconductor devices are distributed between the first and second sets” as recited in claim 1. See Apple, 695 F.3d at 1379. Accordingly, we interpret “a power converter including . . . a plurality of power semiconductor devices” as recited in claim 1 to refer to all of the power semiconductor devices in the power converter, not merely a subset of the power semiconductor devices.” slip op. at 14
- BurdenNot shown unpatentable
“Petitioner fails to identify with requisite particularity how BMR-2008 renders the challenged claims obvious. See 35 U.S.C. § 312 (a)(3). Petitioner has made no showing of the grounds on which the challenged claims are based; Petitioner makes no mapping whatsoever of the BMR-2008 disclosure to the challenged claims, instead suggesting that we compare the disclosures of BMR-2008 and Ericsson-BMR. This is insufficient to meet Petitioner’s obligation to identify with particularity how the asserted references satisfy the requirements of the challenged claims. For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 1, or its dependent claims 2–7, would have been obvious in view of Ericsson-BMR alone or in combination with Spiazzi, Wanes, or Takeshima.” slip op. at 46
Claim constructioncites KSR · GrahamPatents in suitUS 9,516,761 - Arconic Technologies LLC v. Novelis Inc.Rehearing deniedPTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing
The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 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
“documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13
NonePatents in suitUS 11,807,942 - Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing grantedPTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing
The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . 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) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5
- BurdenDenied
“The petition must identify 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. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - Intel Corporation v. Alacritech, Inc.Rehearing grantedPTAB · Jan 25, 2018 · IPR2017-01395 · APJ Daniel N Fishman · IPR · Rehearing
The Board partly granted Intel’s rehearing request to recognize the Stansbury Declaration as a compliant sworn affidavit, but otherwise denied rehearing and left institution denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“When considering a request for rehearing, 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 that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. 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
“the information presented in the petition . . . and any response . . . 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). In the Decision, the Board determined that the record before it was insufficient to show that Stevens21 is a prior art printed publication under 35 U.S.C. §§ 102, 311(b) with respect to the ’948 patent. Stevens2 is one of the references relied upon in the sole asserted ground of unpatentability in the Petition. Accordingly, the Board concluded that Petitioner did not slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Stevens2 was published no later than April 7, 1995 and is prior art under 102(b).” Pet. 45 n.9 (citing Ex. 1063 in support thereof (the “Stansbury Declaration”)). The Petition, per se, provides no other evidence or argument to establish a threshold showing that Stevens2 is a printed publication— publicly accessible by an interested person of ordinary skill in the art before the critical date. slip op. at 3
- Expert testimonyOther
“attested that Stevens2 was ‘standard reference book on TCP/IP’ that was ‘widely cited and relied upon,’ ‘well known resources to a [person of ordinary skill in the art]’ (Petition at 15 (citing Ex.1003 at ¶¶21-88, including ¶¶27, 60, and FN3), 45 (citing Ex.1003 at ¶1212), FN9).” Req. 12. Initially we observe the Petition cites these paragraphs of Dr. Horst’s Declaration as part of the “Background Of Technology” discussion rather than as support for public accessibility of Stevens2. See Pet. 15–24. Furthermore, incorporating by reference such a substantial portion of Dr. Horst’s Declaration (paragraphs 21–88) is improper under our rules. See 37 C.F.R. § 42.6(a)(3). Regardless, even if we consider Dr. Horst’s description of well-known background material (including Stevens2) as support for public accessibility of Stevens2, his testimony does not indicate” slip op. at 5
§ 102 anticipationPatents in suitUS 8,805,948 - David’S Bridal, Inc. v. Jenny Yoo Collection, Inc.Rehearing grantedPTAB · Jun 15, 2017 · PGR2016-00041 · APJ Jennifer S Bisk · PGR · Rehearing
Rehearing was granted to consider David’s Bridal’s acquiescence argument but otherwise denied; institution of review of the patent’s sole claim remained denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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. Petitioner argues that the Board: (1) “misapprehended and overlooked” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“SUMMARY Petitioner, David’s Bridal, Inc., requests rehearing of the Board’s decision (Paper 11) (“Institution Decision”), entered February 22, 2017, denying institution of inter partes review of the sole claim of U.S. Patent D744,723 (Ex. 1002) (“the ’723 patent”). Paper 12 (“Reh’g Req.”). For the reasons that follow, Petitioner’s request is granted to the extent that we address Petitioner’s “acquiescence argument,” but denied in all other respects.” slip op. at 2
None - PTAB · Mar 24, 2017 · IPR2016-01223 · APJ Jennifer S Bisk · IPR · Rehearing
The Board reconsidered its analysis but denied institution because Petitioner did not show McNeill disclosed or rendered obvious the claimed analog signal acquisition channel.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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). We grant Petitioner’s request insofar as we have reconsidered our analysis of whether Petitioner has shown that the prior art discloses the claimed “analog acquisition channel,” but we decline to modify our previous decision. slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency. And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“the claimed “analog signal acquisition channel,” such an element is inherently disclosed by McNeill’s scanner. Reh’g Req. 3–5. Because McNeill’s scanner produces analog signals and then transmits those signals to an analog-to-digital converter, Petitioner asserts the scanner must “necessarily” include a channel connecting the analog sensor. Id. at 5 (citing Ex. 1306 ¶ 98. However, Petitioner’s evidence does not adequately support a finding of inherency. Petitioner relies on expert testimony to support its assertion of inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,504,746 - Johnson Safety, Inc. v. Voxx International CorporationRehearing grantedPTAB · Mar 9, 2017 · IPR2016-01074 · APJ Bryan F Moore · IPR · Rehearing
Petitioner’s rehearing request was granted for clarification but otherwise denied; review remains denied for the challenged claims on the Lavelle-365/Jost/Chang and LCM500NP/Lavelle-365 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“ANALYSIS When considering a request for rehearing, 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 that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“defective prior oath that did not include language covering new matter in the continuation-in-part application is properly remedied by the filing of a supplemental oath in the particular set of circumstances presented here, in which the Patent Office accepted the defective, originally filed oath. In any event, we determine that the filing of a supplemental oath, under these circumstances, does not operate to invalidate the patent at issue or prevent Voxx from being considered the Patent Owner.3 Thus, we are not persuaded by this argument.” slip op. at 5
- BurdenDenied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to 3 This decision does not address the propriety of filing a supplemental oath in other situations such as during prosecution or in the event of a reissue. 4 We also note that Petitioner filed this request for inter partes review, and in doing so, specifically identified Voxx as the owner of the ’355 patent. See Paper 2, 3. institute review of claims 1, 2, 4, 10, 11, 12, 14, 18, 20, 26, 30, 32, 38, 39, and 42 over Lavelle-365, Jost, and Chang, and claims 14, 18, 20, and 42 over LCM500NP and Lavelle-365. 35 U.S.C. § 314(a).” slip op. at 5
NonePatents in suitUS 7,839,355 - Securus Technologies, Inc. v. Global Tel*link CorporationRehearing grantedPTAB · Sep 12, 2016 · IPR2016-00267 · APJ Kevin F Turner · IPR · Rehearing
The Board granted rehearing only insofar as it addressed the request, but denied rehearing overall and maintained denial of institution because the petition did not show a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, deniedGranted in part
“public mode,” including specific citations, namely “Ex. 1005 at 16:24-31; 18:2- 8.” See Reh’g Req. 7. Those citations fall short, however, because they were not provided in the Petition. The closest citation provided by Petitioner is “Ex. 1005 at 16:54-17:3,” at page 41 of the Petition. The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. We must make our determination regarding institution based on what the Petition actually presented and not what it could have reasonably contained had it been reformulated. In re 5 Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *10 (Fed. Cir. July 25, 2016) (holding that the Board is not “free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR”). slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “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”)). This burden never shifts to Patent Owner. 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).” slip op. at 4
- BurdenDecided for patent owner
“As such, it is not clear how Petitioner could have relied solely on the public mode of Bulriss when neither the public nor the privacy modes are acknowledged in the Petition. If an understanding of the public mode of Bulriss was important in the context of Petitioner’s case against the claims of the ’816 Patent, no such import or discussion of the public mode was provided in the Petition. The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “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”)). This burden never shifts to Patent Owner. 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).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“communications” limitation and its proffered motivation to combine Bulriss and Hesse. Reh’g Req. 11–14. We have previously discussed and decided these issues in the Denial of Institution Decision, and we are not persuaded of error in their consideration. Dec. 8–9, 12. As we discussed, the motivation to combine cannot come from the subject patent itself, such that even if “[t]he motivation to combine is therefore explicit in the references” (Reh’g Req. 14), it does not cure the deficiencies of the combination of Bulriss and Hesse provided in the Petition, as discussed in the rest of the Decision. Likewise, the new citations to Bulriss (Reh’g Req. 12), not found in the Petition, cannot be used to show that we misapprehended the arguments supplied in the Petition or that we used unreasonable judgment in determining that one of ordinary skill in the art would not have been motivated to provide scheduling of video visits in the context of Bulriss, in view of Hesse, for the reasons supplied by Petitioner. Dec. 12. For the foregoing reasons, Petitioner has not shown that the Board’s findings are not supported by substantial evidence, nor that the Board abused its discretion 6 in determining that Petitioner failed to demonstrate that at least one of the challenged claims of the ’816 Patent is unpatentable.” slip op. at 6
§ 103 obviousnessPatents in suitUS 7,256,816 - Micron Technology, Inc. v. MLC Intellectual Property, LLCRehearing grantedPTAB · Mar 31, 2016 · IPR2015-00504 · APJ Kevin F Turner · IPR · Rehearing
The Board granted rehearing only as to addressing the request’s assertions and otherwise denied rehearing, leaving the denial of institution for claims 1, 9, 10, 12, 30, 42, and 45 over Kitamura in place.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. ANALYSIS When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 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. 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).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Dr. Baker goes on to further interpret Kitamura (id. at ¶¶ 75–79), citing additional references (Exs. 1012, 1013), but those additional references do not form part of the obviousness ground, and are not cited in the Petition. We further note Petitioner may rely on expert testimony to interpret patents and printed publications, but may not rely on such testimony as a substitute for a patent or printed publication. See 35 U.S.C. § 311(b). We remain persuaded that Dr. Baker does not interpret Kitamura’s D/A conversion circuit as requiring the selection of an analog signal, but rather indicates that only as a possible interpretation of Kitamura. As we stated in the Decision, Dr. Baker’s discussion makes clear how the output voltages could be set, but he does not testify that it must employ his discussed methods. Dec. 10.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1003 ¶ 74 (citing Exhibit 1004 at 21:27-31). We were not persuaded that Dr. Baker is testifying as to how the circuit must perform, only how it could perform. 5 Dr. Baker goes on to further interpret Kitamura (id. at ¶¶ 75–79), citing additional references (Exs. 1012, 1013), but those additional references do not form part of the obviousness ground, and are not cited in the Petition. We further note Petitioner may rely on expert testimony to interpret patents and printed publications, but may not rely on such testimony as a substitute for a patent or printed publication. See 35 U.S.C. § 311(b). We remain persuaded that Dr. Baker does not interpret Kitamura’s D/A conversion circuit as requiring the selection of an analog signal, but rather indicates that only as a possible interpretation of Kitamura. As we stated in the Decision, Dr. Baker’s discussion makes clear how the output voltages could be set, but he does not testify that it must employ his discussed methods. Dec. 10. Petitioner also argues that we mischaracterized what aspects Dr. Baker relied upon in making his assessment. Reh’g Req. 8–9. Petitioner continues that Dr. Baker cites to Kitamura’s explicit disclosure, as well as corroborating his explanation with citations to textbook knowledge, but that we failed to credit the same. Id. at 8. We do not agree. We fully reviewed all of Dr. Baker’s testimony and corroborating citations, but we were not persuaded that Kitamura’s D/A conversion circuit must function as Dr. Baker suggests it could function. In other words, we do not doubt Dr. Baker’s facts; we are only unpersuaded that Dr. Baker’s testimony states sufficiently that Kitamura’s D/A conversion circuit must select among specific analog reference voltages.” slip op. at 5
§ 103 obviousnessPatents in suitUS 5,764,571 - Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 19, 2016 · IPR2015-01702 · APJ James A Tartal · IPR · Institution
Instituted review in IPR2015-01703 on specified Loomis grounds for claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215; denied institution in IPR2015-01702.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17.” slip op. at 15
- Other 314aInstitution denied discretionary other
“E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,764,231
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.